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 01/20/2025.
Priority Date: CON of PAT.(US12,205,100)-(#17/152,667)->PROV>(01-16-2020)
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 18 (exemplary) recites a series of steps for mobile device payment processing.
[Step-2A]-Prong 1:The claim 18 is then analyzed to determine whether it is directed to a judicial exception:
The claim recites the limitations of:
exchanging payment information for a transaction wirelessly between a mobile hardware computing … of a user and a hardware payment terminal for a merchant via one or more of a scan of a visually encoded representation, a near-field communication protocol, a one-time-use code, or an at least partially wireless communication network;
pre-validating an availability of funds for the transaction based on the exchanged payment information using an electronic interface for a non-card-based payment method for the user at a third-party institution by using the user's previously-stored electronic credentials to electronically access funds information for the user's non-card-based payment method; and
in response to pre-validating the availability of the funds, electronically transferring the funds directly from the non-card-based payment method for the user to an account for the merchant to complete the transaction.
The claimed method/system/machine simply describes series of steps for mobile device payment processing.
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 20.
Furthermore, the dependent claims 2-17 and 19 do not resolve the issues raised in the independent claims.
The dependent claims 2-17 and 19 are directed towards:
Using, an amount for the transaction and an identifier for one or more of the user, the non-card-based payment method for the user, the merchant, and the non-card-based payment method for the merchant without any indicator of a payment card; an application programming interface and a hypertext markup language web interface for the third-party institution; ETF; item level data for the transaction comprising identifiers of a plurality of items purchased in the transaction and costs for the items; the NFC and OTC; wherein the prompt is in response to the user attempting payment with a payment card and the code is further executable to determine that the payment card is associated with the user; wherein estimating the likelihood that the user will be able to pay for the transaction using the non-card-based payment method is in response to a network connection being offline; and authorizing a second card-based payment attempt from the user at the hardware payment device in response to the user rejecting the prompt to use the non-card-based payment method for the user in the payment application.
These limitations are also part of the abstract idea identified in claim 1, and are similarly rejected under same rationale.
Accordingly, the dependent claims 2-17 and 19 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 1-13 of US Patent No. 12,205,100.
Although the conflicting claims are not identical, they are not patentably distinct from each other. Both the current invention and ‘100 claims are drawn to a method, comprising:
detecting, using one or more sensors, that a user is physically located within a predefined distance of a merchant;
detecting that the user is attempting payment with a payment card for a transaction at the merchant;
determining that the user has an account for a non-card-based payment method that is associated with the payment card by matching the payment card with the account for the non-card-based payment method in response to detecting that the user is attempting payment with the payment card for the transaction at the merchant;
rejecting payment with the payment card in response to determining the account for the non-card-based payment method;
prompting the user to use the account for the non-card-based payment method as a funding source for the transaction prior to the transaction;
in response to detecting the user's physical location and in response to the user accepting the prompt to use the non-card-based payment method:
determining the user's previously-stored electronic credentials for accessing the account at a third-party institution;
pre-validating an availability of funds for the account of the user at the third- party institution by using the user's previously-stored electronic credentials to electronically access funds information for the user's account via one or more of an application programming interface and a hypertext markup language web interface for the third-party institution;
exchanging non-card-based payment information for the transaction between the hardware computing device of the user and the hardware payment device for the merchant; and
electronically transferring the funds directly from the account for the user to an account for the merchant to complete the transaction in response to verifying that the user has funds available to complete the transaction; and
in response to the user rejecting the prompt to use the non-card-based payment method, resubmitting payment with the payment card for completing 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 “100 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 1-13 of US Patent No. 12,205,100, 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 unpatentable over SHARMA et al (US 2020/0027076-A1) in view of Taylor et al (US 2009/0171852-A1).
Ref claim 1 , SHARMA discloses an apparatus, comprising:
one or more processors; one or more memories that store code executable by the one or more processors (para [0009]; via a server system for facilitating a payment transaction at a POS terminal…includes a memory comprising stored instructions and a processor…cause the server system to receive from customer device, …code… [0137]; via, … The processor 1115 to notify the POS terminal 104 and merchant device 112 of the transaction status via interface 1125…) to:
exchange payment information for a transaction wirelessly between a mobile hardware computing device of a user and a hardware payment terminal for a merchant via one or more of a scan of a visually encoded representation, a near-field communication protocol, a one-time-use code, or an at least partially wireless communication network (para [0033]; via "issuer account" an issuer or acquirer account may be a virtual payment account, such as those accounts managed by PayPal, and like [non-card based payment account]... [0040]; Fig. 1; via a merchant facility 101 with merchant terminal/POS 104; payment transaction on behalf of a customer 102/customer device 106 …[0041-42]; via the environment 100/ merchant database/acquirer server 116/ customer device 106, as a smartphone... );
[[ pre-validate an availability of funds for the transaction based on the exchanged payment information using an electronic interface for a non-card-based payment method for the user at a third-party institution by using the user's previously-stored electronic credentials to electronically access funds information for the user's non-card-based payment method;]] and
in response to pre-validating the availability of the funds, electronically transfer the funds directly from the non-card-based payment method for the user to an account for the merchant to complete the transaction. funds available to complete the transaction (para [0034-35]; via a payment card may be a physical card presented to the merchant for funding the payment. The term "payment network" or collection of systems used for transfer of funds… [0048]; via the issuer server 114/”issuer bank”… The issuer server 114/issuer account of the customer 102../…[PAN]…To complete a payment transaction . issuer server 114 authenticates the customer 102 and debits funds from issuer account of the customer to complete the payment transaction…[0137]; via the processor 1115 to notify the POS terminal 104 and merchant device 112 of the transaction status via interface 1125… [0144]; the printer 1240 to print receipts of the truncation [implied completed transaction] …[0163]; via verification module 1115 to verify and validate a customer 102/customer device 106 for approving the transaction and verify if an issuer account of the customer with payment card have good standing balance… ).
SHARMA does not explicitly disclose the step of: pre-validate an availability of funds for the transaction based on the exchanged payment information using an electronic interface for a non-card-based payment method for the user at a third-party institution by using the user's previously-stored electronic credentials to electronically access funds information for the user's non-card-based payment method.
However, Taylor being in the same field of invention discloses the step of: pre-validate an availability of funds for the transaction based on the exchanged payment information using an electronic interface for a non-card-based payment method for the user at a third-party institution by using the user's previously-stored electronic credentials to electronically access funds information for the user's non-card-based payment method (para[0033], Fig.1 depicts an environment 100/includes merchant sites 102A,B,C,D/the physical location/…an electronic card processing device…records of customers…[0047], Fig.3, a method for secure processing of e-transaction for customers…[ACH] account…[0065], the system 200 initiates a connection with the accounting software for processing e-transaction for customers…[0074], The merchant choose to pre-validate the payment account at 608/ confirmed validity of the payment account to check whether sufficient funds are available in the payment account…at 614…)
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 SHARMA to include the disclosures as taught by Taylor to facilitate for pre-validating transaction funds are available.
Ref claim 2, SHARMA discloses the apparatus of claim 1, wherein the exchanged payment information comprises an amount for the transaction and an identifier for one or more of the user, the non-card-based payment method for the user, the merchant, and the non-card-based payment method for the merchant without any indicator of a payment card (para [0077]; via at 610 the payment server 118 sends code and the transaction amount to the merchant device/the transaction amount received from the customer device 106 [0135]; via account indenter.. ).
Ref claim 3, SHARMA discloses the apparatus of claim 1, wherein the electronic interface for the non-card-based payment method comprises one or more of an application programming interface and a hypertext markup language web interface for the third-party institution (para [0151]; Fig. 13; via …a merchant facilitated e-commerce website interface running on a computing device…).
Ref claim 4, SHARMA discloses the apparatus of claim 1, wherein the direct transfer from the non-card-based payment method for the user to the account for the merchant comprises one or more of an electronic funds transfer (ETF), an automatic clearing house electronic payment, a real-time gross settlement electronic transfer, an electronic wire transfer, an electronic giro transfer, and an internal transfer within the third-party institution (para [0033]; via "issuer account" refers to a financial account is used to fund the financial transaction receives the funds from the issuer account [implied e-funds transfer]...).
Ref claim 5, SHARMA discloses the apparatus of claim 1, wherein the exchanged payment information comprises item level data for the transaction comprising identifiers of a plurality of items purchased in the transaction and costs for the items (para [0164]; via Fig. 15; via an account to accept payment for purchase of items from customer [implied purchase items/costs/identifiers] …).
Ref claim 6, SHARMA discloses the apparatus of claim 1, wherein the payment information is exchanged by one or more of:
the visually encoded representation displayed by one of the mobile hardware computing device and the hardware payment terminal and scanned by another of the mobile hardware computing device and the hardware payment terminal; the near-field communication protocol between the mobile hardware computing device and the hardware payment terminal; the one-time-use code provided to the hardware payment terminal; and the at least partially wireless communications network between the mobile hardware computing device and the hardware payment terminal (para [0044];via the POS terminal 104/ display of a machine-readable code as seen in Fig.1 …a quick response [QR] code scannable by external devices such as customer device 106 including scanner and/or camera…).
Ref claim 7, SHARMA discloses the apparatus of claim 1, wherein the code is further executable by the one or more processors to compare a geographic location determined based on a sensor for the mobile hardware computing device with a geographic location for the hardware payment terminal to validate an authenticity of the transaction (para [0048]; via the issuer server 11…authenticate the customer 102…[0091]; via digital wallet payment mode [implied virtual card accepted by third party]…).
Ref claim 8, SHARMA discloses the apparatus of claim 1, wherein the code is further executable by the one or more processors to prompt the user to use the non-card-based payment method for the user as a funding source for the transaction prior to the transaction.
Ref claim 9, SHARMA discloses the apparatus of claim 8, wherein the prompt is in response to the user attempting payment with a payment card and the code is further executable to determine that the payment card is associated with the user and to prompt the user on the mobile hardware computing device to instead use the non-card-based payment method for the user as the funding source.
Ref claim 10, SHARMA discloses the apparatus of claim 9, wherein the attempted payment with the payment card is rejected by the third-party institution in order to provide the prompt and a subsequent attempted payment with the payment card is accepted by the third-party institution (para [0091]; via digital wallet payment mode [implied virtual card accepted by third party]…).
Ref claim 11, SHARMA discloses the apparatus of claim 8, wherein the prompt is to the merchant on an electronic display screen in communication with the hardware payment terminal, the prompt to verbally suggest to the user to use the non-card-based payment method for the user as the funding source (para [0091]; via digital wallet payment mode [implied first or second card payment with virtual payment mode] …mobile or internet banking mode [no card for bank account]…[0093]; via POS terminal/acquirer server 116…).
Ref claim 12, SHARMA discloses the apparatus of claim 8, wherein the prompt is in response to a location sensor determining the mobile hardware computing device is within a predefined distance of the merchant. (para [0091]; via digital wallet payment mode [implied first or second card payment with virtual payment mode] …mobile or internet banking mode [no card for bank account]…).
Ref claim 13, SHARMA discloses the apparatus of claim 8, wherein the prompt includes an offer for an incentive for the user to use the non-card-based payment source for the user as the funding source (para [0091]; via digital wallet payment mode [implied first or second card payment with virtual payment mode] …mobile or internet banking mode [no card for bank account]…).
Ref claim 14, SHARMA discloses the apparatus of claim 1, wherein the code is further executable by the one or more processors to authenticate the user on the mobile hardware computing device prior to exchanging the payment information (para[0048]; via the issuer server 11…authenticate the customer 102…).
Ref claim 15, SHARMA discloses the apparatus of claim 1, wherein the one or more processors and the one or more memories are disposed on one or more of the hardware payment terminal, a server computing device for the hardware payment terminal, the mobile hardware computing device, and a server computing device for the mobile hardware computing device (para [0091]; via digital wallet payment mode [implied first or second card payment with virtual payment mode] …mobile or internet banking mode [no card for bank account]…[0093]; via POS terminal/acquirer server 116…).
Ref claim 16, SHARMA discloses the apparatus of claim 1, wherein validating an availability of funds further comprises estimating a likelihood that the user will be able to pay for the transaction using the non-card-based payment method for the user based on aggregated financial transactions for the user from the non-card-based payment method for the user and one or more additional accounts for the user. accounts for the user (para [0034]; via "the payment card" physical or virtual card linked with a financial or payment account … to fund a financial transaction …).
Ref claim 17, SHARMA discloses the apparatus of claim 16, wherein estimating the likelihood that the user will be able to pay for the transaction using the non-card-based payment method is in response to a network connection being offline, the aggregated financial transactions for the user are stored offline on the mobile hardware computing device of the user, and the transaction is queued for a period of time until the network connection is online and the funds are electronically transferred using the online connection (para [0034-35]; via a payment card may be a physical card presented to the merchant for funding the payment …; The term "payment network" or collection of systems used for transfer of funds … ).
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.
Ref claim 19, SHARMA discloses the method of claim 18, further comprising:
receiving a first card-based payment attempt from the user at the hardware payment device; determining that the first card-based payment attempt is associated with the user; determining that the user has activated a payment application comprising executable program code on the hardware computing device of the user; rejecting the first card-based payment attempt; prompting the user to use the non-card-based payment method for the user in the payment application as a funding source for the transaction instead of the first card-based payment attempt; and authorizing a second card-based payment attempt from the user at the hardware payment device in response to the user rejecting the prompt to use the non-card-based payment method for the user in the payment application (para [0091]; via digital wallet payment mode [implied first or second card payment with virtual payment mode] …mobile or internet banking mode [no card for bank account]…[0093]; via POS terminal/acquirer server 116…).
Claim 20 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.
CONCLUSION
The prior arts made of record and not relied upon are considered pertinent to applicant's disclosure.
David Lanc (US 20080103972 A1) discloses Secure Authentication and Payment System.
Robert A. Carter (US 20110202466 A1) discloses Multifactor Authentication.
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