DETAILED ACTION
This communication is in response to application no. 19/053534 filed 14 February 2025.
Claims 1-20 are currently pending and have been examined.
Claims 1-20 are rejected as shown in this 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 .
Priority
This application makes reference to or appears to claim subject matter disclosed in Application No. 17/855956, filed 01 July 2022 and in Application No. 18/155753, filed 18 January 2023 (see [0001] of the instant specification). If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78. If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS) in compliance with pre-AIA 37 CFR 1.76; if the application was filed on or after September 16, 2012, the specific reference must be included in an ADS in compliance with 37 CFR 1.76. For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.
If the instant application is a utility or plant application filed under 35 U.S.C. 111(a), the specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application. If the application is a national stage application under 35 U.S.C. 371, the specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application. See 37 CFR 1.78(a)(4) for benefit claims under 35 U.S.C. 119(e) and 37 CFR 1.78(d)(3) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c). This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c). A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)). The petition must be accompanied by (1) the reference required by 35 U.S.C. 120 or 119(e) and by 37 CFR 1.78 to the prior application (unless previously submitted), (2) the applicable petition fee under 37 CFR 1.17(m)(1) or (2), and (3) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
If the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78 but was not included in the location in the application required by the rule (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt, the petition under 37 CFR 1.78 and the petition fee under 37 CFR 1.17(m)(1) or (2) are not required. Applicant is still required to submit the reference in compliance with 37 CFR 1.78 by filing an ADS in compliance with 37 CFR 1.76 with the reference (or, if the application was filed before September 16, 2012, by filing either an amendment to the first sentence(s) of the specification or an ADS in compliance with pre-AIA 37 CFR 1.76). See MPEP § 211.02.
Claim Objections
Claim 8 is objected to because of the following informalities: the last line of the preamble recites “the merchant invoicing comprising:.” Examiner believes this is meant to recite “the merchant invoicing system comprising:.” Appropriate correction is required.
Claim Interpretation
Claims 14 and 18 recite “an identification code which can be used to identify said payment account system.” The use of “can be” in these claims indicates an intended use, which in the context of these claims is not given patentable weight. For example, the claims are not actually reciting identification of the payment account system using the identification code, they are saying merely that the code can be used in that manner. Thus, the limitations in these claims that are given patentable weight are “wherein said payment token (session ID) includes an identification code.”
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 3, 6, 7, 11, 16, and 20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 3 and 11 recite the limitation “the implicit information.” There is insufficient antecedent basis for this limitation in the claims.
Claims 6, 16, and 20 recite the limitation “said information is exchanged ….” It is unclear what “information” is exchanged as multiple pieces of information are present in the claims. For example, is it the “information including said payment token” that is exchanged? Is it the “information including said payment account information” that is exchanged? Is it the “information including a payment completion notice” that is exchanged? These claims are indefinite.
Claim 7 is dependent upon claim 1. Claim 7 re-introduced a lot of the same limitations previously recited in claim 1, for example, “producing a data packet, including a payment token (session ID), associated with a payment account,” etc. Claim 7 thus re-introduces a number of items that were previously established, introducing a number of antecedent basis issues. For example, the “data packet.” Is the “data packet” recited in claim 7 the same “data packet” introduced in claim 1? If they are different, which data packet is transmitted to the merchant invoicing system in claim 7? This issue is pervasive throughout claim 7 where it is unclear if the “payment gateway,” the “merchant invoicing system,” the “data packet,” the “payment token,” and the “payment account” in claim 7 are the same or different than those items introduced in claim 1. Thus, claim 7 is indefinite.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2, 5, and 6 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 2 does not include every limitation from which it depends. Claim 2 recites replacement of one transmission step with another transmission step utilizing the phrase “instead of.” See MPEP 608.01(n)(III) which indicates “Following the statute, the test as to whether a claim is a proper dependent claim is that it shall include every limitation of the claim from which it depends and specify a further limitation of the subject matter claimed. For example, if claim 1 recites the combination of elements A, B, C, and D, a claim reciting the structure of claim 1 in which D was omitted or replaced by E would not be a proper dependent claim, even though it placed further limitations on the remaining elements or added still other elements.” Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Claims 5 and 6 are rejected due to their dependence upon a rejected claim.
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 the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1
Claims 1-7 and 13-16 recite a method which is considered a process. Claims 8-12 and 17-20 recite a system which is considered a machine or manufacture.
Step 2A-Prong One
Claims 1-20 recite the concept of sending data between a number of systems to allow for a purchase transaction involving a coupon to proceed. This is set forth in the claims from a number of different perspectives, thus the scopes of the independent claims very slightly. For example, claims 1-7 are from the point-of-view of the payment account system (steps include Producing a data packet, including a payment token (session ID), associated with a payment account; Transmitting, to said merchant invoicing system, said data packet including said payment token; Receiving, from said payment gateway system, information including said payment token; Matching said payment account according to said payment token; Transmitting, to said payment gateway system, information including said payment account information; and Receiving, from said payment gateway system, information including a payment completion notice) and claims 8-12 are from the point-of-view of the merchant (steps include Instructions for receiving, from said payment account system, a data packet including a payment token (session ID);Instructions for transmitting, to said payment gateway system, information including said payment token and an invoice balance; Instructions for receiving, from said payment gateway system, information including at least one piece of coupon information; Instructions for redeeming said coupon and finalizing said invoice balance; Instructions for transmitting, to said payment gateway system, information including said coupon redemption information and final invoice balance; and Instructions for receiving, from said payment gateway system, information including said payment completion notice). Clams 13-20 are from the payment gateway POV. These steps and POVs are also set out in Fig. 2. This concept falls into the certain methods of organizing human activity grouping of abstract ideas including a commercial interaction and sales activities. The dependent claims recite additional limitations (exceptions are set forth in the 112 rejections above wherein some claims do not recite additional limitations) that also fall into the certain methods of organizing human activity grouping as they also recite commercial activity and/or sales activities. Thus, claims 1-20 recite an abstract idea.
Step 2A-Prong Two
This judicial exception is not integrated into a practical application. The claims recite the additional element of a system comprising a checkout system, a sales invoicing management server, and software programs (found in claims 8-12) or a system comprising a communication port, a processor a memory, and software programs (found in claims 17-20) and includes no more than mere instructions to apply the exception using a generic computer component. The systems do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Claims 1-7 and 13-16 do not positively recite any additional elements. Claim 1 does not recite any elements that are actually performing steps; the payment gateway system, for example, is merely a source of information and is not part of the claimed elements.
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed previously with respect to Step 2A-Prong Two, the additional element in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. See MPEP 2106.05(f). The claims do not provide an inventive concept (significantly more than the abstract idea). The claims are ineligible.
Claim Rejections - 35 USC § 103
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 of this title, 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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0054336 (“Graylin”) in view of US 2019/0080325 (“Pourfallah”).
Regarding Claim 1, Graylin teaches a method for operating a payment account system to execute mobile payments, in collaboration with a payment gateway system and a merchant invoicing system, the method comprising:
Producing a data … , including a payment token (session ID), associated with a payment account (see ¶ 0037 and 0038);
Transmitting, to said merchant invoicing system, said data … including said payment token (see ¶ 0040 and Fig. 3 elements 254 and 256);
Receiving, from said payment gateway system, information including said payment token (see ¶ 0040 and Figs. 3 and 6);
Matching said payment account according to said payment token (see ¶ 0008);
Transmitting, to said payment gateway system, information including said payment account information (see ¶ 0008); and
Receiving, from said payment gateway system, information including a payment completion notice (see Fig. 1 element 110 and Fig. 3 elements 256, 268, and 270).
Graylin does not expressly teach a data packet.
However, Pourfallah teaches a data packet (see ¶ 0152, ¶ 0394, and Figs. 6A and 6B)
It would have been obvious to one having ordinary skill in the art at the time of filing to combine the teachings of Graylin and Pourfallah to utilize a data packet as described in Pourfallah. The claimed invention is merely a combination of old elements, in the combination each element merely performs the same function as it does separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding Claim 2, Graylin further teaches Transmitting, to said payment gateway system, information including said payment account information and at least one piece of coupon information, instead of transmitting, to said payment gateway system, information including said payment account information (see ¶¶ 0004-0006 and ¶ 0013).
Regarding Claim 7, this claim is substantially similar to claim 1 and is rejected similarity.
Regarding Claim 8, this claim is substantially similar to claim 1 and is rejected similarity.
Regarding Claims 3 and 11, Graylin further teaches said data … is shown as an encoded image including at least one of (a) a barcode, (b) a QR code, and (c) an image pattern, the implicit information in said encoded image including said payment token is transmitted to said merchant invoicing system by scanning said encoded image using a scanner or digital camera connected to said merchant invoicing system (see ¶ 0060).
Graylin does not expressly teach a data packet.
However, Pourfallah teaches a data packet (see ¶ 0152, ¶ 0394, and Figs. 6A and 6B)
It would have been obvious to one having ordinary skill in the art at the time of filing to combine the teachings of Graylin and Pourfallah to utilize a data packet as described in Pourfallah. The claimed invention is merely a combination of old elements, in the combination each element merely performs the same function as it does separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding Claims 4 and 10, Graylin further teaches said data … is transmitted to said merchant invoicing system by wireless signal (see ¶ 0008).
Graylin does not expressly teach a data packet.
However, Pourfallah teaches a data packet (see ¶ 0152, ¶ 0394, and Figs. 6A and 6B)
It would have been obvious to one having ordinary skill in the art at the time of filing to combine the teachings of Graylin and Pourfallah to utilize a data packet as described in Pourfallah. The claimed invention is merely a combination of old elements, in the combination each element merely performs the same function as it does separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding Claims 5 and 12, Graylin further teaches said coupon information is closed-loop gift card information, which is redeemed at said merchant invoicing system (see ¶ 0003).
Regarding Claims 6, Graylin further teaches said payment gateway system is divided into some subsystems including coupon information management module, payment token (session ID) management module and bill management module; thereby, said information is exchanged between said payment account system and said modules (See Figs. 1A, 3, and 10 and ¶ 0051).
Regarding Claims 9, Graylin further teaches said checkout system is a computer installed with relative software (See Figs. 1A, 3, and 10 and ¶ 0051).
Conclusion
Claims 13-20 are not rejected under 35 USC §102/103. These claims are from the POV of the payment gateway system and thus they include limitations not found in the other claims such as payment processing, coupon analysis, and invoice adjustment. These claims are similar to claims 39 and 40 found in application 17/855956 filed 08/08/2025 (see the Priority section above for how this application may be related to the instant application). The Examiner in that application found that the limitations, including “Instructions for receiving, from said merchant invoicing system, information including a payment token (session ID) and an invoice balance; Instructions for identifying said payment account system according to said payment token; Instructions for transmitting, to said payment account system, information including said payment token; Instructions for receiving, from said payment account system, information including a payment account information and at least one piece of coupon information; Instructions for sending, to said merchant invoicing system, information including said coupon information; Instructions for receiving, from said merchant invoicing system, information including coupon redemption information and said invoice's final balance; Instructions for processing a payment according to information including said payment account information and said invoice's final balance; and Instructions for transmitting, to said payment account system and said merchant invoicing system, information including a payment completion notice” were not found in the single or an obvious combination of references. As noted by that Examiner, and the present Examiner agrees, it is the sequence and precise steps including automatic coupon redemption in the recited sequence that is unique to these claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEREDITH A LONG whose telephone number is (571)272-3196. The examiner can normally be reached Mon - Fri 9:30 - 6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached on 571-270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MEREDITH A LONG/Primary Examiner, Art Unit 3622