DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
Claim 1 is the only pending system claim in this instant application per original claim filed on 02/12/2025 by Applicant.
Thirteen/13 IDSs have been filed by the Applicant so far, all on 06-18-2025 that have been considered and entered.
This Office Action is a non-final rejection on merits in response to its original application of 12 FEBRUARY 2025 that is titled: “USING A MOBILE WALLET INFRASTRUCTURE TO SUPPORT MULTIPLE MOBILE WALLET PROVIDERS”.
Accordingly, pending Claim 1 is now being rejected herein.
The instant application 19/051644 is a CON of application serial number/ASN 17/891030 allowed as US Patent no. 12,248,929; which is a CON of ASN 16/550029 allowed as US Patent no. 11,468,434; which is a CON of ASN 14/928521 allowed as US Patent no. 10.438,196; which is a CON of ASN 13/680824 allowed as US Patent no. 9,208,488; with the earliest priority date being 21 NOVEMBER 2011 (pre-AIA ). Examiner notes that parent ASN 17/891030 had 102, 103 and Double Patenting rejections in Non-final Office Action mailed out on 05/10/2024 prior to its Allowance; and grand-parent ASN 16/550029 had only Double Patenting rejection (and prior 103 rejection was withdrawn) in it in Final Office Action mailed out on 01/24/2022 prior to its Allowance; and thus, neither parent application had a 101 rejection mailed out in the Office Actions cited above (prior to Allowance) in those applications. Hence, only Double Patenting and 101 rejections have been issued in the instant application hereunder.
Double Patenting Rejection
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer (TD) must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer (TD) by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office Action. Even where the NSDP rejection is provisional, the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office Action, see 37 CFR 1.111(a). For a reply to final Office Action, see 37 CFR 1.113(c). A request for reconsideration, while not provided for in 37 CFR 1.113(c), may be filed after final for consideration. See MPEP §706.07(e) and §714.13.
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Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-17 of US Patent No. 12,248,929; as well as over Claims 1-20 of US Patent No. 11,468,434; as well as over Claims 1-22 of US Patent No. 10,438,196; as well as over Claims 1-22 of US Patent No. 9,208,488. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite similar limitations directed to: computing systems are directed to performing a transaction using a third party mobile wallet, performing a transaction using a third party point of sale (POS) system and to making a purchase from a third party mobile wallet provided by a third party mobile wallet provider; and in one scenario, a cloud-based transaction platform is provided, which receives communication from an agent terminal over a communication channel connected to the cloud-based transaction platform; wherein the agent communication indicates that a customer desires to perform a mobile wallet transaction using their third party mobile wallet; and wherein the cloud-based transaction platform sends the agent communication to a third party mobile wallet platform, receives communication from the third party mobile wallet platform confirming processing of the transaction, and sends communication to the agent terminal over a communication channel connected to the cloud-based transaction platform, where the communication indicates confirmation of the processing of the transaction.
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.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more, wherein Claim 1 is a computing system claim.
Claim 1: Ineligible.
The claim recites a series of steps. The claim is directed to a computing 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 management of a mobile wallet comprised of: facilitate a transaction for a customer using a mobile wallet: receive a customer communication over one of a plurality of different communication channels, the customer communication indicating that a customer desires to purchase an item for a specified amount of funds using a specified payment method from a mobile wallet; receive communication over at least one of the plurality of different communication channels indicating that a purchase code has been presented to an agent; debit the mobile wallet by a specified amount of funds; credit an agent account by the specified amount of funds; and send communication over one of the plurality of different communication channels, the communication indicating confirmation of a processing of the transaction. These limitations, as drafted, are steps of 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: computing system; one or more processors; one or more computer-readable storage media having stored thereon computer-executable instructions which are executable by the one or more processors; and an agent terminal. These additional elements are considered extra-solution activities for communications. The system, processors, storage media and agent terminal in the steps are 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 devices (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 [0020]-[0021], [0028] and [0072] of the Applicant’s own Specification (PG Pub. no. US 2025/ 0182093 published on 06/05/2025) does not describe any specific details, e.g., mobile wallet, transaction platform, agent platform, communication between these two platforms, etc. have been recited for a purchase transaction, as in “Obtaining information about transactions using the Internet to verify credit card transactions, CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011)”; and e.g., POS system, monetary transaction system, purchase code, etc.), used for making a purchase, as in “Presenting offers to potential customers and gathering statistics generated based on the testing about how potential customers responded to the offers; the statistics are then used to calculate an optimized price, OIP Technologies, 788 F.3d at 1363, 115 USPQ2d at 1092-93”; and thus, these elements don’t describe a “new technology solution”, but these elements are well-understood and conventional at least as described in exemplary paras [0020]-[0021], [0028] and [0072] copied below ---
{“[0020] Embodiments described herein are directed to performing a transaction using a third
party mobile wallet, performing a transaction using a third party point of sale (POS) system and to making a purchase from a third party mobile wallet provided by a third party mobile wallet provider. In one embodiment, a cloud-based transaction platform is provided, which receives communication from an agent terminal over a communication channel connected to the cloud-based transaction platform. The agent communication indicates that a customer desires to perform a mobile wallet transaction using their third party mobile wallet. The cloud-based transaction platform sends the agent communication to a third party mobile wallet platform, receives communication from the third party mobile wallet platform confirming processing of the transaction, and sends communication to the agent terminal over a communication channel connected to the cloud-based transaction platform, where the communication indicates confirmation of the processing of the transaction. …………………….……………………………………..
[0021] In another embodiment, a cloud-based transaction platform performs a transaction using a third party point of sale (POS) system. The cloud-based transaction platform receives communication from a specified P0S system implemented at an agent terminal over a communication channel connected to the cloud-based transaction platform. The POS communication indicates that a customer has initiated a mobile wallet transaction using their third party mobile wallet. The cloud-based transaction platform sends the POS communication to a corresponding third party POS transaction processing system that has been established to process POS transactions from the specified POS system, receives communication from the third party POS transaction processing system confirming processing of the transaction, and sends communication to the specified P0S system implemented at the agent terminal over a communication channel connected to the cloud-based transaction platform, where the communication indicates confirmation of the processing of the transaction. …………………………..
[0028] Those skilled in the art will appreciate that various embodiments may be practiced in network computing environments with many types of computer system configurations, including personal computers, desktop computers, laptop computers, message processors, hand-held devices, multi-processor systems, microprocessor- based or programmable consumer electronics, network PCs, minicomputers, mainframe computers, mobile telephones, PDAs, tablets, pagers, routers, switches, and the like. Embodiments described herein may also be practiced in distributed system environments where local and remote computer systems that are linked (either by hardwired data links, wireless data links, or by a combination of hardwired and wireless data links) through a network, each perform tasks (e.g. cloud computing, cloud services and the like). In a distributed system environment, program modules may be located in both local and remote memory storage devices. ………………………………………
[0072] The monetary transaction system 210 then returns a secure, perishable purchase code to the unbanked subscriber over at least one of the channels connected to the monetary transaction system and receives a subsequent agent branch communication over a channel indicating that the purchase code has been presented to an agent (branch). The monetary transaction system 210 validates the status of the specified payment method, determines if the specified payment method can accommodate a purchase for the specified amount, performs a limit check and/or a velocity check on the selected payment method, debits the specified payment method by the specified amount of funds, returns a notification to the agent branch authorizing the purchase and sends a receipt to the unbanked subscriber over a communication channel. The cloud-based transaction system 210 may thus be used in this manner to make a retail purchase using a native or third party mobile wallet.”} ---
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.
Therefore, said Claim 1 is rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Conclusion
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. In order to provide compact prosecution, only 101 rejection has been given that was not given in the parent application 17/891030, and it is further noted that Pub. No. US 2007/0198432 filed by Pitroda et al., is of particular interest as prior art that teaches concept/s in general (it was cited in the parent application 17/891030 also, but the 103 rejection in said parent application was ultimately withdrawn for an Allowance).
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.
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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
Prior to initiating the first e-mail correspondence with an Examiner, Applicant is responsible for filing a written statement with the USPTO in accordance with MPEP §502.03(II). All received e-mail messages including e-mail attachments shall be placed into this application’s record. The Examiner’s e-mail address is provided below at the end of this Office Action.
/S.M./
PSA Examiner, Art Unit 3691
sanjeev.malhotra@uspto.gov
16 APRIL 2026
/SANJEEV MALHOTRA/Examiner, Art Unit 3691
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