Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Status
Claims 1-20 are currently pending and are presented for examination on the merits.
Priority
Applicant's claim of priority US patent application 13/353,250 filed January 18, 2012 (and progeny), under 35 U.S.C. 120 is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 3/3/2025, 11/4/2025, 6/10/2026 were filed before the filing of a first office action on the merits. As such, the submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Objections
Specification
The abstract of the disclosure is objected to for use of the term “may.” That is to say, the phrases "…may received …may be displayed...," imply that it may not include the specified structure, or be configured as basically described, when such is not the case. A brief narrative of the disclosure as a whole is required. See MPEP § 608.01(b). Please make more definite. Appropriate correction/clarification is required.
Drawings
Each sheet must include a top margin of at least 2.5 cm. (1 inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch). Please confirm that all drawings are in compliance.
The drawings are objected to because the labels, external to objects and boxes, are shown without leader lines, and labels, internal to objects and boxes, are shown without underlining. There are external labels that are underlined, and internal labels that are not; please be consistent. 37 CFR 1.84(q).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
In general, please remove line numbering in the claim set, so as to facilitate copy/pasting into office actions.
The claims are objected because the term “the device” is confusing. It would be clearer to distinguish “a first device” (or the like) from “the merchant device.” Appropriate consideration is requested.
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.
Claims 1-20 are rejected under 35 U.S.C. § 101, because they recite non-patentable subject matter under MPEP § 2106, e.g., the 2019 PEG, October update. More particularly, the claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, when considering subject matter eligibility under 35 U.S.C. 101, 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. 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, 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. Broad categories of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulas. See, generally, MPEP § 2106; Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
Under MPEP § 2106, Step 1, the claimed invention, taking the broadest reasonable interpretation, recites a process (i.e., a method), machine (e.g., system, device, etc.), article of manufacture (e.g., a non-transitory computer readable medium) or composition of matter, and as such, is patent eligible.
Under MPEP § 2106, Step 2a-prong 1, Claims 1-20 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). More particularly, the entirety of the method steps is directed towards conducting a transaction using paired devices, and giving updated statuses of the transaction at milestones. This was a wide-spread and/or long-standing commercial practice at the time of conception, performed by humans (e.g., consumers, merchants, social circles, etc.) manually and via generic computing at the time (the ability to pair devices was generic computing technology at the time of conception). As such, the inventions include an abstract idea under § 2106, and Alice Corporation.
Under step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., the structure—a first device, one or more processors, non-transitory computer-readable media, paired devices, encrypted data, user interface, etc.) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)) and/or generally instruct an artisan to apply it (the method) across generic computing technology.
A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. See Alice, 573 U.S. at 222; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). That is to say, the claims are not directed to a new software or computer, but rather employs pre-existing software to do what’s been previously done, albeit less efficiently or slower. “[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citations omitted). More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (§ 2106.05(e)).
Under part 2b, the additional elements offered by the independent/dependent claims either further delineate the abstract idea, add further abstract idea(s), adds insignificant extra-solution activity, or further instruct the artisan to apply it (the abstract idea(s)) across generic computing technology. Upon traversal, Applicant is asked to specify which limitation of the claims do not meet one or more of the foregoing categories. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because no one claim effects an improvement to another technology or technical field, an improvement to the functioning of a computer itself, or move beyond a general link of the use of the abstract idea to a particular technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Under Alice, merely applying structure or executing the abstract idea on one or more generic computer system (e.g., a computer system comprising a generic database; a generic element (NIC) for providing website access, etc.; a generic element for receiving user input; and a generic display on the computer, in any of their forms) to carry out the abstract idea more efficiently fails to cure patent ineligibility. See, e.g., Content Extraction, 776 F.3d at 1347 (claims reciting a “scanner” are nevertheless directed to an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea). Moreover, merely reciting steps that can be performed in the human mind is not patent eligible (see, e.g., Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (Fed. Cir. 2011) (collecting and comparing data are mental steps); Braemar Mfg. LLC v. ScottCare Corp., 816 F. App’x 465, 470 (“Claims that “merely collect, classify, or otherwise filter data” are ineligible for patent under § 101.”); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-72 (Fed. Cir. 2011) (comparing a collected list of credit card numbers to transactions to identify different cards and user names used from the same IP address to detect fraud can be performed entirely in the human mind including the logical reasoning.)) “The requirements that the machine learning model be “iteratively trained’ or dynamically adjusted in Machine Learning Training patents do[es] not represent a technological improvement.” Recentive Analytics, 134 F 4th at 1212. Claim language reciting the machine learning model at a high level of generality without any specificity of how the machine learning model is trained or processes the data. The machine learning model is merely used as a tool to implement the abstract idea. Id. at 1213 (claims recite ineligible subject matter where “the only thing the claims disclose about the use of machine learning is that machine learning is used in a new environment”).
Lastly, courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data, MPEP 2106.05(d), wherein the italicized tasks are particularly germane to the instant invention.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Claim 1, 2, 4-6, 8-12, 15, 16, and 18-20 are rejected under § 102(a) as being anticipated by US 2011/0189981 to Faith et al.
With respect to Claims 1, 8, and 15, Faith teaches a system (FIG. 1), a method (FIGS. 4-6), a device for enhancing application security, the device comprising: one or more processors; and non-transitory computer-readable media (FIGS. 1, 10) storing instructions that, when executed by the one or more processors, cause the device to perform operations comprising: pairing the device to a merchant device ([0033];[0039]) such that the device is configured to at least send encrypted card data ([0115-17];[0134]) to the merchant device and the merchant device is configured to at least send requests to the device ([0098], linked through bump); initiating, based at least in part on the pairing, an application stored in association with the device, the application configured to display (FIGS. 7A-9C) a status indicator associated with a transaction in a user interface (UI) (FIG. 8C; all displays of information and prompts are various statuses of the transaction); receiving a request from the merchant device ([0099-100]) to provide the encrypted card data for the transaction ([0115-17]; [0134]); updating the status indicator in the UI based at least in part on receiving the request ([0098-100]); generating the encrypted card data in response to the request ([0018];[0065];[0098-100];[0134]); sending the encrypted card data to the merchant device ([0018];[0098-100]); updating the status indicator in the UI based at least in part on sending the encrypted card data (FIGS. 7A-9C); displaying an interactive field for receiving a signature for the transaction ([0117];[0124];[0127]; FIG. 10, label 32(e) teaching input elements; FIG. 8C, a field for entering password teaches a field for entering a signature) based at least in part on receiving an indication from the merchant device that the transaction has been approved ([0100]); receiving input data in the interactive field, the input data corresponding to the signature ([0127]); updating the status indicator in the UI based at least in part on receiving the input data corresponding to the signature ([0100]); receiving a confirmation that the transaction has been completed ([0082];[0103]); and updating the status indicator in the UI based at least in part on receiving the confirmation that the transaction has been completed ([0082], an application alert).
With respect to Claims 2, and 16, Faith teaches wherein: the status indicator displays a first element corresponding to an amount due ([0085]); and updating the status indicator in the UI based at least in part on sending the encrypted card data includes adding a second element to the status indicator indicating a payment card associated with the encrypted card data. (FIGS. 7A-9C, VISA)
With respect to Claim 4, Faith teaches wherein: the status indicator displays a first element corresponding to an amount due ([0085]); and updating the status indicator in the UI based at least in part on receiving the input data corresponding to the signature includes adding a second element to the status indicator showing an instance of the signature ([0127];FIGS. 9B, 9C, showing an instance of a motion signature).
With respect to Claims 5 and 19, Faith teaches wherein: the status indicator displays a first element corresponding to an amount due ([0085]); and updating the status indicator in the UI based at least in part on receiving the confirmation that the transaction has been completed includes adding a second element to the status indicator indicating the transaction has been completed. [0082]
With respect to Claims 6, and 20, Faith teaches wherein the status indicator displays a first element corresponding to an amount due ([0085]), and receiving a receipt for the transaction; and updating the status indicator in the UI based at least in part on receiving the receipt, wherein updating the status indicator includes adding a second element to the status indicator indicating the receipt has been received. [0082]
With respect to Claims 9 and 18, Faith teaches displaying an interactive field for receiving a signature for the transaction in the UI based at least in part on receiving an indication from the second device that the transaction has been approved; receiving input data in the interactive field, the input data corresponding to the signature; and displaying a fourth update to the status indicator in the UI based at least in part on receiving the input data corresponding to the signature. (FIGS. 9A-9C)
With respect to Claim 10, Faith teaches displaying multiple modalities for receiving confirmation that the transaction has been completed ([0082]); receiving input data requesting that confirmation be received via a short messaging service modality; and displaying a fourth update to the status indicator in the UI indicating confirmation has been sent via the short messaging service modality. [0082]
With respect to Claim 11, Faith teaches displaying multiple modalities for receiving confirmation that the transaction has been completed ([0082]); receiving input data requesting that confirmation be received via an email modality; and displaying a fourth update to the status indicator in the UI indicating confirmation has been sent via the email modality. [0082]
With respect to Claim 12, Faith teaches displaying multiple modalities for receiving confirmation that the transaction has been completed ([0082]); receiving input data requesting that confirmation be received via a print modality; and displaying a fourth update to the status indicator in the UI indicating confirmation has been sent via the print modality. ([0082], an alert can be printed on the display or printer ([0141]).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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:
a. Determining the scope and contents of the prior art.
b. Ascertaining the differences between the prior art and the claims at issue.
c. Resolving the level of ordinary skill in the pertinent art.
d. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 3, 7, and 17 are rejected under § 103(a), as being unpatentable over Faith, in view of US 2013/0013499 to Kalgi.
With respect to Claims 3, and 17, Faith teaches wherein the status indicator displays a first element corresponding to an amount due ([0085]). Faith fails to expressly teach, but Kalgi teaches the operations further comprise: receiving user input indicating a tip to be added to the amount due; and updating the status indicator in the UI based at least in part on the user input indicating the tip to be added to the amount due, wherein updating the status indicator includes adding a second element to the status indicator indicating the tip has been added to the amount due. [0064] Kalgi discusses the need to improve the practicality of online purchase transactions. [0004]. It would have been obvious to one of ordinary skill in the art to modify Faith, to include a provision for receiving a tip amount in order to increase the practicality of online purchase transactions.
With respect to Claim 7, Faith teaches determining that the transaction has been completed ([0082]); and based at least in part on the transaction being completed, causing the status indicator to display: a first element indicating an amount due associated with the transaction ([0085]); a third element indicating a payment card identifier used for the transaction (FIGS. 7A-9C, VISA); a fourth element depicting a signature acquired for the transaction (FIGS. 8B, 8C); a fifth element indicating that a receipt for the transaction has been communicated ([0082]); a sixth element indicating that the transaction has been completed ([0082];FIG. 4, send transaction confirmation). Kagli teaches a second element indicating a tip amount associated with the transaction ([0064]). Under the same rationale as Claim 3, it would have been obvious to one of ordinary skill in the art to modify Faith to include this limitation taught by Kagli.
Claim 13 is rejected under § 103(a), as being unpatentable over Faith, in view of US 2010/0312700 to Coulter et al.
With respect to Claim 13, Faith teaches displaying multiple modalities for receiving confirmation that the transaction has been completed ([0082]). Faith fails to expressly teach, but Coulter teaches receiving input data requesting to skip confirmation; and displaying a fourth update to the status indicator in the UI indicating confirmation has been skipped. ([0126], Coulter teaches that “steps may be omitted” in the inventive process. Coulter teaches the desire to balance competing concerns, detecting fraud and erroneous transactions ([0003]). It would have been obvious to one of ordinary skill in the art to modify Faith to include the ability to skip confirmation to effect a more streamlined process that balances concerns, and allows the processor to focus on detecting fraud and erroneous transactions.
Claim 14 is rejected under § 103(a), as being unpatentable over Faith, in view of US 2010/0063893 to Townsend.
With respect to Claim 14, Faith teaches customer and merchant facing devices ([0046]). Faith fails to expressly teach, but Townsend teaches wherein: the first device is a customer-facing device disposed within a vehicle; and the second device is a merchant-facing device disposed within the vehicle. ([0089]) Townsend discusses disadvantages including the user being required to manually input personal information, which is especially problematic in a moving vehicle. ([0005]) It would have been obvious to one of ordinary skill in the art to modify Faith to include use within a vehicle, in order to make it more practical to input information.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J JACOB whose telephone number is (571)270-3082. The examiner can normally be reached on M-F 8:00-5:00, alternating Fri. off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart can be reached on 5712723955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM J JACOB/ Examiner, Art Unit 3696
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