DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, 19/052,236, was filed on 02/12/2025, and claims priority from Japanese Application 2024-021378 filed on 02/15/2024.
The effective filing date is after the AIA date of March 16, 2013, and so the application is being examined under the “first inventor to file” provisions of the AIA .
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.
Priority
Acknowledgment is made of applicant's claim for foreign priority, based on Japanese Application 2024-021378 filed on 02/15/2024.
On 03/28/2025, the certified priority document was electronically retrieved by USPTO from WIPO.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of the Application
This Non-Final Office Action is in response to Applicant’s communication of 02/12/2025.
Claims 1-3 and 5-15 are pending, of which claims 1, 13, and 14 are independent.
In the most recent amendment, claim 4 is cancelled, claim 15 is newly added, and claims 1-3 and 5-14 are amended.
All pending claims have been examined on the merits.
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 1-3 and 5-15 are rejected under 35 U.S.C. §101 because the claimed invention is directed to non-statutory subject matter. The claimed invention is directed to an abstract idea, without “significantly more”.
Based on the flowchart in MPEP § 2106, Step 1 of the Alice/Mayo analysis is: “Is the claim to a process, machine, manufacture or composition of matter?”
In regards to Step 1 of the Alice/Mayo analysis, claim 1 is an apparatus claim, independent claim 13 is a method claim, and claim 14 is an article of manufacture claim or product by process claim (“non-transitory computer readable medium”).
For the sake of compact prosecution, we continue with the Alice/Mayo “abstract idea” analysis.
Step 2A, prong 1 of the Alice/Mayo analysis is: “Does the claim recite a law of nature, a natural phenomenon (product of nature), or an abstract idea?”
In regards to Step 2A, prongs 1 and 2 of the Alice/Mayo analysis, the abstract idea elements recited in independent claim 1 are shown in italic font. (The “additional elements” and “extra solution steps” are shown in italic and underlined font):
Claim 1 (Currently Amended): An information processing system comprising:
an electronic money service;
an account management system;
a messaging service which is in communication with a first user terminal of a first user and a second user terminal of a second user;
wherein the electronic money service is configured to:
receive a first instruction to send a remittance amount of electronic money from the first user to the second user;
determine whether the second user is registered with the electronic money service;
in response to determining that the second user is registered with the electronic money service, add the remittance amount to an account of the second user and transmit a second instruction to the messaging service to notify the second user;
in response to determining that the second user is not registered with the electronic money service, transmit a first request to the messaging service to present to the second user a receiving method for receiving the electronic money;
wherein the messaging service is configured to:
in response to receiving the second instruction, display a notification on the second user terminal indicating that the remittance amount has been added to the account;
in response to receiving the first request, display to the second user on the second user terminal the receiving method for the electronic money;
wherein the account management system is configured to:
receive a first operation based on the receiving method from the second user;
transmit information for prompting the second user to register with the electronic money service to the second user,
register the second user with the electronic money service;
transmit a transition information to the second user;
wherein the electronic money service is configured to:
receive a second operation from the second user in response to the transition information; and
add the remittance amount to the account.
More specifically, claims 1-3 and 5-15 recite an abstract idea: “Commercial or Legal Interactions (Including Agreements in the form of Contracts; Legal Obligations; Advertising, Marketing, or Sales Activities or Behaviors; Business Relations)”, as discussed in MPEP §2106(a)(2) Parts (I) and (II), and in the 2019 Revised Patent Subject Matter Eligibility Guidance.
The “Commercial or Legal Interactions” elements include:
“determine whether the second user is registered with the electronic money service”.
“in response to determining that the second user is registered with the electronic money service, add the remittance amount to an account of the second user”.
“in response to determining that the second user is not registered with the electronic money service, … add the remittance amount to an account of the second user”.
Moreover, claims 1-3 and 5-15 recite “Mathematical Concepts", specifically “Mathematical Relationships”, “Mathematical Formulas or Equations”, and “Mathematical Calculations”, as discussed in MPEP §2106.04(a)(2) Part (IV), and in the 2019 Revised Patent Subject Matter Eligibility Guidance.
The mathematical elements include:
“add the remittance amount to an account of the second user”.
The “additional elements” include: “a first user terminal” and “a second user terminal”.
Moreover, “additional extra-solution elements” include: “receive a first instruction to send a remittance amount of electronic money from the first user to the second user”, “receive a first operation based on the receiving method from the second user”, “receive a second operation from the second user in response to the transition information”, “transmit a second instruction to the messaging service to notify the second user”, “transmit a first request to the messaging service to present to the second user a receiving method for receiving the electronic money”, “transmit information for prompting the second user to register with the electronic money service to the second user”, “transmit information for prompting the second user to register with the electronic money service to the second user”, “transmit a transition information to the second user”, “display a notification on the second user terminal indicating that the remittance amount has been added to the account”, “display to the second user on the second user terminal the receiving method for the electronic money” and “register the second user with the electronic money service”.
Step 2A, prong 2 of the Alice/Mayo analysis is “Does the claim recite additional elements that integrate elements that integrate the judicial exception into a practical application?”
In regards to Step 2A, prong 2 of the Alice/Mayo analysis, this abstract idea is not integrated into a practical application, because:
The claim is directed to an abstract idea with additional generic computer elements. The generically recited computer elements (“a first user terminal” and “a second user terminal”) do not add a meaningful limitation to the abstract idea, because they amount to simply implementing the abstract idea on a computer. The claim amounts to adding the words "apply it" (or an equivalent) with the abstract idea, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.
The extra-solution activities (“register”, “receive”, “transmit”, and “display”) do not add a meaningful limitation to the method, as they are insignificant extra-solution activity;
The combination of the abstract idea with the additional elements (generically recited computer elements), and/or with the extra-solution activities, does not integrate the abstract idea into a practical application.
Step 2B of the Alice/Mayo analysis is: “Does the claim recite additional elements that amount to significantly more than the judicial exception?”
In regards to Step 2B of the Alice/Mayo analysis, the claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea, because:
When considering the elements "alone and in combination" (“a first user terminal” and “a second user terminal”), they do not add significantly more (also known as an "inventive concept") to the exception, because they amount to simply implementing the abstract idea on a computer. Instead, they merely add the words "apply it" (or an equivalent) with the abstract idea, or mere instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea.
In regards to the extra solution activities (“register”, “receive”, “transmit”, and “display”), these are recognized as such by the court decisions listed in MPEP § 2106.05(d).
More specifically, in regards to the “register” step, see the court cases Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015) (storing and retrieving information in memory); and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015) (storing and retrieving information in memory).
More specifically, in regards to the “receive” and “transmit” steps, see the court cases OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network) and (presenting offers and gathering statistics), OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network).
Moreover, in regards to the “display” steps, see Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 120 U.S.P.Q.2d 1844 (Fed. Cir. 2016) (Holding that the claimed menu graphic user interface is an abstract idea under 35 USC §101, because claimant "[did] not claim a particular way of programming or designing the software to create menus that have these features, but instead merely claims the resulting systems").
Moreover, in regards to “apply it”, according to MPEP § 2106.05(f)(2):
Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015).
In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
The Examiner holds that the independent claims “use a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data)” or “simply add a general purpose computer or computer components after the fact to an abstract idea”.
Independent claims 13 and 14 are rejected on the same grounds as independent claim 1. Independent claim 14 is also rejected on the grounds that it recites a non-transitory computer-readable medium, which is merely another generic computer component.
All dependent claims are also rejected, because they merely further define the abstract idea.
Response to Amendment
Re: Claim Rejections - 35 USC § 101
In response to Applicant’s amendments to the claims, the 35 USC § 101 rejection has been amended.
Re: Claim Rejections - 35 USC § 103
In response to Applicant’s amendments to the claims, the 35 USC § 101 rejection has been withdrawn.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 date of this final action.
Any inquiry concerning this communication or earlier communications should be directed to Examiner Ayal Sharon, whose telephone number is (571) 272-5614, and fax number is (571) 273-1794. The Examiner can normally be reached from Monday to Friday between 9 AM and 6 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SPE Christine Behncke can be reached at (571) 272-8103 or at christine.behncke@uspto.gov. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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Sincerely,
/Ayal I. Sharon/
Examiner, Art Unit 3695
August 26, 2026
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