DETAILED ACTION
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 .
Status of Claims
Claims 1-12 and 16-20 are pending in this instant application per remarks and claim amendments filed on 07/23/2026 by Applicant. Claims 1, 10 and 19 are three independent claims with all reciting system claims. Claims 2-9, 11-12 and 20 are respective dependent claims.
This Office Action is a final rejection in response to the claim amendments and the remarks filed by the Applicant on 23 JULY 2026 for its original application of 06 FEBRUARY 2025 the same date that is titled: “SYSTEM AND METHOD FOR PROVIDING SINGLE DIGITAL PRODUCT ACQUISITION FROM A DIGITAL SUBSCRIPTION SERVICE”.
Accordingly, amended Claims 1-12 and 16-20 are now being rejected herein.
Claim 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.
(NOTE: Latest ‘amendments to the claims’ filed by the Applicant on 07/23/2026 are shown as underlined additions, and all deletions may not be shown.)
Claims 1-12 and 16-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more, wherein Claims 1, 10 and 19 are independent system, system and system claims respectively.
Exemplary Analysis.
Claim 1: Ineligible.
The claim recites a series of steps. The claim is directed to a system reciting a series of steps, which is a statutory category of invention (Step 1 -- YES).
The claim is analyzed to determine whether it is directed to a judicial exception. The claim recites the limitations of: enabling a single digital product acquisition from an on-line media partner of a plurality of on-line media partners, each of the plurality of on- line media partners associated with a corresponding paywall system of a plurality of paywall systems, wherein the corresponding paywall system to the on-line media partner manages digital content of the on-line media partner to block non-subscribers of the on-line media partner from accessing the digital content of the on-line media partner, comprised of: receive a request to access a portion of digital content controlled by the on-line media partner from a user that is a non-subscriber of the on-line media partner; determine if the user that is requesting access to the portion of digital content controlled by the on-line media partner is a customer of the interface system; receive a request to access a portion of digital content controlled by the on-line media partner of the plurality of on-line media partners from a user that is a non-subscriber of the on-line media partner of the plurality of on-line media partners; determine if the user that is requesting access to the portion of digital content controlled by the on-line media partner of the plurality of on-line media partners is the customer; determine that the user that is requesting access has sufficient tokens to access the portion of digital content controlled by the on-line media partner of the plurality of on-line media partners; in response to determining that sufficient tokens have been received to enable access the digital content controlled by the on-line media partner from the user, download an interface system platform to a computer at which the user is requesting access, instantiate the interface system platform to the computer at which the user is requesting access, and add user interface elements to the corresponding paywall system of the plurality of paywall systems that manages digital content of the on-line media partner of the plurality of on-line media partners, which unlock the corresponding paywall and provide access to the requested digital content; and in response to receiving the sufficient tokens to access the portion of digital content controlled by the on-line media partner of the plurality of on-line media partners, enable display of the portion of digital content controlled by the on-line media partner of the plurality of on-line media partners. These limitations, as drafted, are steps of a system with series of steps like in a method that, under its broadest reasonable interpretation, covers performance of the limitations via a method of organizing human activity such as fundamental economic principles or practices (including hedging, insurance, mitigating risk), and/or commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations), and/or managing behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions), but for the recitation of generic computer/s and/or computer component/s such as the devices/ mobile devices. These limitations fall under the “certain methods of organizing human activity” group (Step 2A1 -- YES).
Next, the claim is analyzed to determine if it is integrated into a practical application. The claim recites additional elements of: a paywall system that manages; digital content of the on-line media partner; and a memory that stores computer instructions and a processor that when executing the computer instructions causes the system to: enable an interface system to allow access to the digital content of the on-line media partner of the plurality of on-line media partners through the corresponding paywall system of the plurality of paywall systems by a non-subscriber of the on-line media partner of the plurality of on-line media partners that is a customer of the interface system. These additional elements are considered extra-solution activities. The paywall system and interface system in the steps are hardware recited at a high level of generality, i.e., as generic processors performing generic computer/s functions of processing data. These generic processors are no more than mere instructions to apply the exception using generic computer/s and/or computer component/s. 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. Thus, the claim is directed to the abstract idea (Step 2A2 -- NO).
Next, the claim is analyzed to determine if there are additional elements in this claim 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 with respect to Step 2A2 above, the additional elements in the claim amount to no more than mere instructions to apply the exception using generic computer/s and/or computer component/s. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer and/or computer components over a network cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Because the additional elements described above were considered to be extra-solution activities in Step 2A, they are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine and conventional in the field. The disclosure does not provide any indication that these systems (processors) are anything other than generic processors and the Symantec, TLI, and OIP Techs. court decisions (MPEP 2106.05 (d) (II)) indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Also, paras [0046]-[0049] of the Applicant’s own Specification (PG Pub. No. US 2025/ 0252413 of 08/07/2025) does not describe any specific details about paywalls other than well-understood and conventional concepts, and these paras don’t describe a “new technology solution”, at least as described in Specification’s following paras ---
{“[0046] Below are several scenarios for the purchase of or access to a single digital product (e.g., a digital article), depending on the combination of on-line media partner and their chosen paywall system. In one embodiment where the on-line media partner has selected a server-side paywall system, the paywall system manages the digital content access via a Content Management System (CMS) or a paywall system that hosts server-side functionality. In this embodiment, the SDPAS 140 and the server-side paywall system 120 work together to add functionality to the code of the server-side paywall system 120. The enhanced functionality of the single digital product acquisition system 140 enables the server-side paywall system 120 to check and determine if the user requesting access to the digital content is a new or existing customer of the SDPAS 140 (even if they are not a customer of the on-line media partner). ………….………………………………………………………………………………………………………………………….
[0047] Additionally, the enhanced functionality of the SDPAS 140 enables the server-side paywall system 120 to present a “Login Now” virtual button to the existing customer of the single digital product acquisition system 140. Further, the enhanced functionality of the SDPAS 140 enables the server-side paywall system 120 to present a “Single Purchase” virtual button to the existing customer, if the single digital product acquisition system 140 determines that the digital content has not been previously purchased. Moreover, if the enhanced functionality of the SDPAS 140 determines that the digital content has already been previously purchased by the existing customer, then the single digital product acquisition system 140 enables the server-side paywall system 120 to present the purchased single digital content to the existing customer. If the user requesting access to the digital content is a not a customer of the single digital product acquisition 140, the enhanced functionality of the SDPAS 140 enables the server-side paywall system 120 to present a “Join Now” or “Sign Up Now” virtual button to the single digital product acquisition system 140. ……………………………………………………………
[0048] In another embodiment, the paywall system is implemented by the on-line media partner as a “plug-in” (e.g., WordPress 128). In such an embodiment, the SDPAS 140 is integrated with on-line media partner “plug-in” code (website configuration) to enable presentation of a “Login Now” virtual button to an existing customer of the single digital product acquisition system 140, or a “Sign Up Now” virtual button to a non-existing customer of the single digital product acquisition system 140. In another implementation, the SDPAS 140 is integrated with on-line media partner “plug-in” code (website configuration) to manage the interaction with the user requesting access to the digital content and the virtual button that is presented, as described above in the CMS embodiment. ……………………………………………………
[0049] In still another embodiment, the full content of the single digital product (e.g., a digital article) is delivered to the requesting user and the client-side paywall system 122 manages within the context of the client browser. In such an embodiment, the single digital product acquisition system 140 coordinates with the on-line media partner to include a first script link (e.g., Stubly.js) for the single digital product acquisition system 140 in the header of all digital content, such as digital items/article pages. This first script link manages presentation and behavior of a “Use Single Digital Product Acquisition System” button, with respect to the previously mentioned scenarios, such as current customer of the SDPAS 140, current non-customer of the SDPAS 140, current customer of the SDPAS 140 attempting to view previously purchased single digital product, and current customer of the SDPAS 140 attempting to purchase a previously unpurchased single digital product. In one or more such embodiments, the SDPAS 140 manages inclusion and execution of script that enables viewing of digital content blocked by the paywall system 122 for existing or new purchase.”}
and indicate that the concept described by the extra-solution additional elements is conventional. Accordingly, a conclusion that the aforementioned extra-solution additional elements are well-understood, routine and conventional activity is supported under Berkheimer options 2 and 3, respectively.
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 elements 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 (Step 2B -- NO), and the claim is not patent eligible.
The analysis above applies to all statutory categories of the invention including independent system Claims 10 and 19, which perform the steps similar to those of the independent system Claim 1. Furthermore, the limitations of dependent system Claims 2-9, further narrow the independent system Claim 1 with additional steps and limitations (e.g., if the user that is requesting access to a portion of digital content controlled by the on-line media partner is not a customer of the interface system, prompt the user that is requesting access to join the interface system; if the interface system determines that the user requesting access is a customer of the interface system but does not have sufficient tokens to access to the digital content of the on-line media partner, enable the requesting user to acquire more tokens, ………; wherein paywall system manages digital content of an on-line media partner using Content Management System (CMS); wherein the interface system is operatively connected with a payment operator to enable a customer of the interface system to transfer funds for one time use digital tokens; enable the paywall system to check if a user requesting access to a portion of digital content controlled by the on-line media partner is a customer of the interface system, ………; wherein the interface system is integrated into a website of the on-line media partner as a plug-in to enable presentation of the interface system in an iFrame; ……… wherein the interface system coordinates with the on-line media partner to include an interface system link to each of the plurality of portions of digital content; wherein the digital content controlled by the on-line media partner that are requested by users are downloaded to the user's browser, ………; etc.), and do not resolve the issues raised in rejection of the independent system Claim 1. Similarly, dependent system Claims 11-12/16-18 and dependent system Claim 20 also further narrow their independent Claims 10 and 19 respectively, which are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Therefore, said Claims 1-12 and 16-20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC §103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This application currently names joint inventors. In considering patentability of the claims the Examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. The Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the Examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The following is a quotation of 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 set forth in Graham v. John Deere Co., 383 U.S.1,148 USPQ 459 (1966), that are applied 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.
(NOTE: Latest ‘amendments to the claims’ filed by the Applicant on 07/23/2026 are shown as underlined additions, and all deletions may not be shown.)
Claims 1-12 & 16-20 are rejected under 35 USC 103 as unpatentable over a combination of references (Vora, Leung and Suzuki for all claims, plus Yan and Lewallen for some dependent claims) as described below for each claim/ limitation.
Independent Claim 1 is rejected under 35 USC 103 as unpatentable over Pub. No. US 2003/ 0046210 filed by Vora et al. (hereinafter “Vora”) in view of Pub. No. US 2023/ 0209116 filed by Leung et al. (hereinafter “Leung”), and further in view of Pub. No. US 2023/ 0232191 filed by Suzuki et al. (hereinafter “Suzuki”), and as described below for each claim/ limitation.
Examiner notes that addition of “a plurality of on-line media partners” in Claim 1 requires a new fourth Chang reference US 2004/ 0133469 for teaching it; and the addition of “sufficient tokens have been received to enable access the digital content” in Claim 1 requires a new fifth Scapa reference 2010/ 0223677 for teaching it.
Examiner notes that Claim 5 was rejected (in last Office Action) further in view of Pub. No. US 2023/ 0230065 filed by Yan, Jun (hereinafter “Yan”); and Claim7 was rejected (in last Office Action) further in view of US Patent No. 6,801,225 issued to Lewallen, Stephen R. (hereinafter “Lewallen”).
Examiner notes that the 103 references listed above have been cited as part of compact prosecution and if the claims are amended in future, other references could be added for rejection under 35 USC 103. However, a full 103 rejection is not being given as the number of references for independent claim rejection has increased to five/5 references, and total number of references is seven/7 references for some dependent claims.
Response to Arguments
Applicant's remarks (pages 9--25) and claim amendments dated 23 JULY 2026 with respect to the rejection of amended Claims 1-12 and 16-20 have been carefully considered, but they are not persuasive and do not put these amended claims in a condition ready for Allowance. Thus, the rejection of amended Claims 1-12 and 16-20 has been maintained as described above. Additionally, Examiner notes that all of the previous rejections under 35 USC §112, second paragraph, and all of the previous rejections under 35 USC §103 have been withdrawn. Thus, the rejection of amended Claims 1-12 and 16-20, as described above, is being maintained herein under 35 USC §101 with some modifications in this Office Action, where needed to provide clarification in response to the Applicant’s claim amendments and remarks of 07/23/2026.
In response to the Applicant’s latest arguments against the rejection under 35 USC 101, Examiner respectfully disagrees. Also, Examiner clarifies that the instant application is nothing more than an improvement of an abstract idea, wherein using technology/ computers to execute an abstract idea is at most an improvement to the abstract idea.
In further response to the Applicant’s arguments of 07/23/2026 against the rejection under 35 USC 101 about “STEP 2A, PRONG ONE - Amended claims are not directed to an abstract idea”, and Examiner respectfully disagrees. Also, upon reviewing the Specification and the claims as whole, independent Claim 1 (exemplary) is at least directed to one of the ineligible “certain methods of organizing human activity” that include “fundamental economic principles or practices” (based on at least ‘transaction/ transaction log/ partner payout payment for their recent sale’ on Page 19 of 37 in Specification), and “commercial or legal interactions” (based on at least ‘the single digital product acquisition system 140 will send (e.g., ACH)’ on Page 19 of 37 in Specification), as well as “managing personal behavior or relationships” (based on at least ‘executing the computer instructions’ in Specification multiple times). System Claim 1 describes a system for enabling a single digital product acquisition from an on-line media partner is disclosed. In such embodiments, a paywall system manages digital content of the on-line media partner to block non-subscribers of the on-line media partner from accessing the digital content of the on-line media partner (see Abstract). Thus, like the concept of intermediated settlement in Alice, and the concept of hedging in Bilski, the concept of “generating a set of instructions sequences based on certain criteria from a user for image transaction processing” recited in exemplary independent Claim 1 “is a fundamental economic practice long prevalent in our system of commerce”. Thus, it is clear that exemplary independent Claim 1 recites fundamental economic practices and/or commercial transactions that, under the Revised Guidance, fall under the category of abstract ideas related to “certain methods of organizing human activity.” 2019 Revised Guidance, 84 Fed. Reg. at 52. Accordingly, independent Claim 1 recites an abstract idea.
In further response to the Applicant’s arguments of 07/23/2026 against the under 35 USC 101 about “STEP 2A, PRONG TWO - The claims integrate any alleged abstract idea into a practical application”, and Examiner respectfully disagrees. Also, under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea --- see MPEP 2106.05(f).
In response to the Applicant’s arguments of 07/23/2026 traversing the rejection under 35 USC 101, Examiner respectfully disagrees. Examiner further notes that the Applicant’s arguments claiming that In Re: McRo applies to the instant application, but Examiner notes that the current application is not similar to McRo, because the claims in McRo are focused on a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type. Those claims do not simply use a computer as a tool to automate conventional activity, it is the incorporation of the claimed rules, not the use of the computer, that “improved existing technological process” by allowing the automation of further tasks. Further, an improvement in computer related technology can be improvement to computer itself or steps/functions that allow a computer to perform a function it could not perform before the invention. The current invention is not related to an improvement in technology but rather uses the computer as a tool to apply the abstract idea.
In response to the Applicant’s arguments of 07/23/2026 traversing the rejection under 35 USC 101, Examiner respectfully disagrees with the Applicant’s arguments that the instant application’s claims are similar to DDR Holdings, and notes that the claims of the instant application are unlike the claims in DDR Holdings. In DDR Holdings, it was expanding commercial opportunities for internet websites that made the claims eligible. Examiner further notes that the US Court of Appeals noted in its decision on DDR Holdings that --- {“We caution, however, that not all claims purporting to address Internet-centric challenges are eligible for patent. For example, in our recently-decided Ultramercial opinion, the patentee argued that its claims were “directed to a specific method of advertising and content distribution that was previously unknown and never employed on the Internet before.” 2014 WL 5904902, at *3. But this alone could not render its claims patent-eligible.”}, and Examiner notes that the present case is different: the focus of the claims is not on such an improvement in internet-centric computers as tools, but on certain independently abstract ideas that use computer as tools.
In response to the Applicant’s arguments of 07/23/2026 traversing the rejection under 35 USC 101 claiming that In Re: BASCOM applies to the instant application, Examiner respectfully disagrees. Examiner further notes that the instant application is not similar to BASCOM, because the claims in BASCOM are focused on a specific asserted filtering of internet content using a computer, even at an off-site location such as at an ISP location (Internet Service Provider location). The claims herein do not simply recite a similar filtering internet content. The current invention is not related to an improvement in technology as in BASCOM, but it rather uses the computer as a tool to apply the abstract idea.
If the claims are directed to a patent-ineligible concept, for Step 2B we must “look with more specificity at what the claim elements add, in order to determine ‘whether they identify an “inventive concept” in the application of the ineligible subject matter’ to which the claim is directed.” Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). We look to see whether there are any “additional features” in the claims that constitute an “inventive concept,” thereby rendering the claims eligible for patenting even if they are directed to an abstract idea. Alice, 573 U.S. at 221. Examiner notes that Applicant’s claims as a whole, including claim amendments of 07/23/2026, do not amount to significantly more than the abstract idea itself. The system limitations in the instant application do not add significantly more, because they are simply an attempt to limit the abstract idea to a particular technological environment. A generic recitation of a system/processor performing its generic computer functions does not make the claims less abstract. Also, the use of a particular machine and transformation to a different state or thing are not relevant to the instant application, and don’t overcome the rejection under 35 USC 101.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this Final Action.
The prior art made of record and not relied upon, listed in Form 892, that is considered pertinent to the Applicant's disclosure and review for not traversing already issued patents and/or claimed inventions by the claims of the current invention of the Applicant. Examiner notes that Form 892 contains more references than those cited in the rejection above under 35 USC 103, and that all the references cited on said Form 892 are relevant to this application and form a part of the body of prior art.
The Examiner has pointed out particular references contained in the prior art of record in the body of this action for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. The Applicant should consider the entire prior art as applicable as to the limitations of the claims; and said prior art includes references with synonyms for terms used in the claims that have been interpreted under the BRI (broad reasonable interpretation) procedures of the Office. It is respectfully requested from the Applicant, in preparing the response, to consider fully the entire references as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Sanjeev Malhotra whose telephone number is (571) 272-7292. The Examiner can normally be reached during Monday-Friday between 8:30-17:00 hours on a Flexible schedule.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, the Applicant is encouraged to contact the Examiner directly.
If attempts to reach the Examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas, can be reached on (571) 270-1836. The facsimile/fax phone number for the organization, where this application or proceeding is assigned, is 571-273-8300.
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Electronic Communications
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/S.M./
Examiner, Art Unit 3691
sanjeev.malhotra@uspto.gov
/ABHISHEK VYAS/Supervisory Patent Examiner, Art Unit 3691
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