DETAILED ACTION
Response to Amendment
This Office Action is responsive to Applicant’s arguments and request for reconsideration of application 19/079,776 (10/25/22) filed on 08/13/26.
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 non-statutory subject matter.
ALICE/ MAYO: TWO-PART ANALYSIS
2A. First, a determination whether the claim is directed to a judicial exception (i.e., abstract idea).
Prong 1: A determination whether the claim recites a judicial exception (i.e., abstract idea).
Groupings of abstract ideas enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Mathematical concepts- mathematical relationships, mathematical formulas or equations, mathematical calculations.
Certain methods of organizing human activity- fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
Mental processes- concepts performed in the human mind (including an observation, evaluation, judgement, opinion).
Prong 2: A determination whether the judicial exception (i.e., abstract idea) is integrated into a practical application.
Considerations indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception
Considerations that are not indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
2B. Second, a determination whether the claim provides an inventive concept (i.e., Whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
Considerations indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception NOTE: The only consideration that does not overlap with the considerations indicative of integration into a practical application associated with step 2A: Prong 2.
Considerations that are not indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. NOTE: The only consideration that does not overlap with the considerations that are not indicative of integration into a practical application associated with step 2A: Prong 2.
See also, 2010 Revised Patent Subject Matter Eligibility Guidance; Federal Register; Vol. 84, No. 4; Monday, January 7, 2019
Claims 1 - 20 is/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.
1: Statutory Category
Applicant’s claimed invention, as described in independent claim 1, is/are directed to a process (i.e. a method).
2(A): The claim(s) are directed to a judicial exception (i.e., an abstract idea).
PRONG 1: The claim(s) recite a judicial exception (i.e., an abstract idea).
Certain Method of Organizing Human Activity
The claim as a whole recites a method of organizing human activity. The claimed invention involves displaying an incentive indicator representing an incentive that is conditionally available to a first account maintained by the payment service on behalf of a first user associated with the first user device, wherein the incentive becomes available when the incentive is shared with more than a threshold quantity of accounts within a period of time; receiving user input data indicating a request to share the incentive with a plurality of additional accounts maintained by the payment service on behalf of a plurality of respective additional users; determining that a quantity of accounts in a group of accounts comprising the first account and the plurality of additional accounts satisfies the threshold quantity; and
enabling incentive functionality for the group of accounts based at least in part on the quantity satisfying the threshold quantity, wherein the incentive functionality is disabled for at least one account that is not included in the group of accounts, and wherein the incentive functionality enables each account in the group of accounts to use the incentive to purchase an item from a merchant, which is a fundamental economic principles or practices (group account/ account functionality; incentive to purchase an item from a merchant); commercial or legal interactions (group account/ account functionality; incentive to purchase an item from a merchant); and managing personal behavior or relationships or interactions between people (causing ….. to display; receiving; determining; enabling).
The mere nominal recitation of a “computing system” does not take the claim out of the method of organizing human activity grouping. Thus, the claim recites an abstract idea.
Mental Processes
The claim recites limitations directed to displaying an incentive indicator representing an incentive that is conditionally available to a first account maintained by the payment service on behalf of a first user associated with the first user device, wherein the incentive becomes available when the incentive is shared with more than a threshold quantity of accounts within a period of time; receiving user input data indicating a request to share the incentive with a plurality of additional accounts maintained by the payment service on behalf of a plurality of respective additional users; determining that a quantity of accounts in a group of accounts comprising the first account and the plurality of additional accounts satisfies the threshold quantity; and enabling incentive functionality for the group of accounts based at least in part on the quantity satisfying the threshold quantity, wherein the incentive functionality is disabled for at least one account that is not included in the group of accounts, and wherein the incentive functionality enables each account in the group of accounts to use the incentive to purchase an item from a merchant.
The limitation(s), as drafted, is/are a process that, under it’s broadest reasonable interpretation, covers performance of the limitation(s) in the mind but for the recitation of generic computer components. That is, other than reciting a “computing system”, nothing in the claim precludes the steps from practically being performed in the mind. For example, but for the “computing system”, the claim encompasses the user manually displaying an incentive indicator representing an incentive that is conditionally available to a first account maintained by the payment service on behalf of a first user associated with the first user device, wherein the incentive becomes available when the incentive is shared with more than a threshold quantity of accounts within a period of time; receiving user input data indicating a request to share the incentive with a plurality of additional accounts maintained by the payment service on behalf of a plurality of respective additional users; determining that a quantity of accounts in a group of accounts comprising the first account and the plurality of additional accounts satisfies the threshold quantity; and enabling incentive functionality for the group of accounts based at least in part on the quantity satisfying the threshold quantity, wherein the incentive functionality is disabled for at least one account that is not included in the group of accounts, and wherein the incentive functionality enables each account in the group of accounts to use the incentive to purchase an item from a merchant.
The mere nominal recitation of a “computing system” does not take the claim limitation out of the mental processes grouping. This/these limitation(s) recite a mental process. Thus, the claim recites an abstract idea.
PRONG 2: The judicial exception (i.e., an abstract idea). Is not integrated into a practical application.
The claim recites the combination of additional elements of a “computer-implemented” (preamble only). The claim recites the combination of additional elements of a “computing system” performing the positively recited steps or acts. The claim recites the combination of additional elements of the “receiving” step being “from the first user device”. The claim also recites the combination of additional elements of “causing, by a computing system associated with a payment service, a first user interface of a payment application executing on a first user device to display …..”. The claim also recites the combination of additional elements of “wherein enabling the incentive functionality for a second account of the group of accounts comprises causing a second user interface of the payment application to be displayed in a foreground of a second user device of a second user of the plurality of respective additional users, without user input from the second user”. The additional element(s) is/ are recited at a high level of generality (i.e., as a generic computer performing the generic computer functions of (a) data display (e.g., “causing ….. to display”, etc. step(s) as claimed); (b) data receipt/ transmission (e.g., “receiving”, etc. step(s) as claimed); and (c) data processing (e.g., “determining”, “enabling”, etc. step(s) as claimed)). The additional element(s) is/ are recited at a high level of generality (i.e., as general means of gathering account and incentive data), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The “computing system” that performs the step(s) is also recited at a high level of generality, and merely automates the step(s). The “computing system” limitations are no more than mere instructions to apply the exception using generic computer components. Accordingly, the additional element(s) does not integrate the abstract idea into a practical application because it does not impose any meaningful limitations on practicing the abstract idea. The claim is directed to an abstract idea. NOTE: (a) The claim is exclusively from the perspective of the “computing system”. (b) Although a “first user interface of a payment application executing on a first user device”/ “first user device” is referenced in the claimed invention, the claimed invention is not from the perspective of the “first user interface of a payment application executing on a first user device”/ “first user device”. The “first user interface of a payment application executing on a first user device”/ “first user device” is merely interacting with the entity (i.e., “computing system”) from whose perspective the invention is claimed. (c) Although a “second user interface of the payment application”/ “second user device” is referenced in the claimed invention, the claimed invention is not from the perspective of the “second user interface of the payment application”/ “second user device”. The “second user interface of the payment application”/ “second user device” is merely interacting with the entity (i.e., “computing system”) from whose perspective the invention is claimed.
Since the claim(s) recite a judicial exception and fails to integrate the judicial exception into a practical application, the claim(s) is/are “directed to” the judicial exception. Thus, the claim(s) must be reviewed under the second step of the Alice/ Mayo analysis to determine whether the abstract idea has been applied in an eligible manner.
2(B): The claims do not provide an inventive concept (i.e., The claim(s) do not include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
As discussed with respect to Step 2A Prong Two, the additional element(s) 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 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.
Furthermore, the additional element(s) under STEP 2A Prong 2 have been evaluated in STEP 2B to determine if it is more than what is well-understood, routine conventional activity in the field. Applicant’s specification as filed 03/14/25 does not provide any indication that the “computing system” is anything other than a generic off-the-shelf computer components, see at least Figs. 1 and 19, para. [0043] [0044] [0047] [0314] [0315] [0316] [0339] [0340]. Furthermore, the prosecution history of the instant application provides Esch, US Pub. No. 2013/0290186; Kurlas, US Pub. No. 2023/0394458; McGiffin, US Pub. No. 2005/0187881; and Davis, US Pub. No. 2016/0117651 operating in a similar environment, suggesting performing tasks such as (a) data display (e.g., “causing ….. to display”, etc. step(s) as claimed); (b) data receipt/ transmission (e.g., “receiving”, etc. step(s) as claimed); and (c) data processing (e.g., “determining”, “enabling”, etc. step(s) as claimed) are well understood, routine and conventional. See Esch, abstract, Fig. 2, [0011] [0012] [0013] [0014] [0016] [0018] [0019] [0024] [0027] [0028] [0030] [0031] [0032] [0035]. See Kurlas, abstract, Figs. 8, 9, [0005] [0007] [0009] [0011] [0013] [0015] [0018] [0025] [0032] [0039] [0047] [0055] [0108] [0109] [0110] [0187] [0189]. See McGiffin, [0049]. See Davis, [0232] [0233] [0248] [0249] [0251]. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed by applicant (a) data display (e.g., “causing ….. to display”, etc. step(s) as claimed); (b) data receipt/ transmission (e.g., “receiving”, etc. step(s) as claimed); and (c) data processing (e.g., “determining”, “enabling”, etc. step(s) as claimed) are well understood, routine and conventional. SAP America Inc. v. Investpic, LLC, 890 F.3d 1016 USPQ2d 1638 (Fed Cir. 2018) (displaying and disseminating financial information) and Intellectual Ventures 1 LLC v. Capital One Bank (USA) (advanced internet interface providing user display access of customized web pages) indicate displaying information is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Symantec, TLI, OIP Techs and buySAFE court decisions cited in 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 here). Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer.
For these reasons, there is no invention concept in the claim, and thus the claim is ineligible.
Dependent claims 2 - 7 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims). Therefore, independent system claim 8 and independent one or more non-transitory computer-readable media claim 15 is/are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as the method claims. The components (e.g., “one or more processors”, “memory”) described in independent system claim 8 and the components (e.g., “one or more non-transitory computer-readable media”, “one or more processors”) described in independent one or more non-transitory computer-readable media claim 15, add nothing of substance to the underlying abstract idea. At best, the product (system; one or more non-transitory computer-readable media) recited in the claim(s) are merely providing an environment to implement the abstract idea.
Dependent claims 9 - 14 and 16 - 20 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Response to Arguments
101
Applicant's arguments have been fully considered but they are not persuasive.
(1)Applicant argues the claim(s) are not directed to a judicial exception (i.e., an abstract idea).
Certain Method of Organizing Human Activity
The claimed invention is directed to certain methods of organizing human activity.
Fundamental economic principles or practices relate to the economy and commerce. The claimed invention encompasses fundamental economic principles or practices as it relates to marketing and processing of payments (group account/ account functionality; incentive to purchase an item from a merchant).
The claimed invention encompasses commercial or legal interactions. The claimed invention relates to marketing and processing of payments (group account/ account functionality; incentive to purchase an item from a merchant). Marketing and processing of payments (group account/ account functionality; incentive to purchase an item from a merchant), in the instant scenario, pertains to agreements in the form of “advertising”, “marketing or sales activities or behaviors” and “business relations”.
The claimed invention encompasses managing personal behavior or relationships or interactions (e.g., causing ….. to display; receiving; determining; enabling).
See also, MPEP §2106.04(a)(2)(II).
Mental Processes
The claimed invention is directed to mental processes. The claimed invention encompasses observations, evaluations, judgements and opinions (e.g., “determining ….. that a quantity of accounts in a group of accounts comprising the first account and the plurality of additional accounts satisfies the threshold quantity; and enabling ….. incentive functionality for the group of accounts based at least in part on the quantity satisfying the threshold quantity, wherein the incentive functionality is disabled for at least one account that is not included in the group of accounts, and wherein the incentive functionality enables each account in the group of accounts to use the incentive to purchase an item from a merchant …..”) which are examples of mental processes.
Contrary to applicant’s arguments, the courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aide. Similarly, the courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. Although claims 1 - 20 suggest the steps or acts occur on a computer (i.e., “computing system” in computer-implemented method claims 1 - 7; “one or more processors”, “memory” in system claims 8 - 14; “one or more non-transitory computer-readable media”, “one or more processors” in one or more non-transitory computer-readable media claims 15 - 20), nothing forecloses applicant’s claimed invention from being performed by a human and thus applicant’s claimed invention is still directed to a mental process.
See also, MPEP §2106.04(a)(2)(III).
(2)Applicant argues the judicial exception (i.e., an abstract idea) is integrated into a practical application.
Applicant suggests the claimed invention presents a “practical application” because it (a) provides a technical solution to a technical problem (e.g., “The additional elements recited in amended claim 1 ….. are tied to the computer- centric problems described in the above-noted passages of Applicant's Specification, and they provide, when amended claim 1 is viewed as a whole, a computer-centric solution to those problems.” See pgs. 13 - 14 of applicant’s arguments/ remarks as filed 08/13/26.); and (b) provides improvements in the functioning of a computer, or to any other technology or technical field (e.g., “Specifically, the additional elements recite a real time update feature for a user interface, which effects a specific improvement over prior art systems by, among other things, allowing a user in the group of users to see the updated user interface quickly and potentially without waiting until user input is received (which may be when connectivity to a network may be absent and thus the updated user interface may not be available).” See pg. 14 of applicant’s arguments/ remarks as filed (08/13/26). “Specifically, the pending claims recite limitations that, when viewed as a whole, target an improvement over conventional technologies at least by enabling functionality on devices of a group of accounts, which includes causing a user interface of the payment application to be displayed on the devices. This user interface includes incentive functionality that allows each account in the group (and not accounts outside the group) to use the incentive to purchase an item from a merchant.” See pg. 14 of applicant’s arguments/ remarks as filed (08/13/26)). The Examiner disagrees.
Applicant’s arguments suggesting the claimed invention (a) provides a technical solution to a technical problem; and (b) provides improvements in the functioning of a computer, or to any other technology or technical field suggests the applicant believes the technical aspects of the invention are substantial. There exists alternative perspectives however.
With respect to applicant’s “solution”/ “improvements”. Marketing and processing of payments (group account/ account functionality; incentive to purchase an item from a merchant) are directed to the underlying abstract idea, not the functioning of the computer itself. What applicant is really arguing (e.g., “This may allow for the users to see the updated user interfaces quickly and potentially without waiting until user input is received (which may be when connectivity to a network may be absent and thus the updated user interface may not be available).” See pg. 13 of applicant’s arguments/ remarks as filed (08/13/26).). is the use of a computer as a tool or the benefits of automation itself. In other words, applicant is arguing the speed and convenience of automating a manual task.
Adding the words “apply it” (or an equivalent) with the judicial exception is not
not indicative of integration into a practical application. See also, MPEP § 2106.05(f). Merely using a computer as a tool to perform an abstract idea; and mere instructions to implement an abstract idea on a computer are not indicative of integration into a practical application. See also, MPEP §2106.05(f).
Contrary to applicant’s arguments, features applicant relies upon are “insignificant”.
For example, they amount to “necessary data gathering and outputting” (e.g., “receiving, by the computing system, from the first user device, user input data indicating a request to share the incentive with a plurality of additional accounts maintained by the payment service on behalf of a plurality of respective additional users;”).
For example, they are not significant because they are only “nominally or tangentially related to the invention”, provide an “insignificant application” and do not impose meaningful limits on the claim (e.g., “causing, by a computing system associated with a payment service, a first user interface of a payment application executing on a first user device to display an incentive indicator representing an incentive that is conditionally available to a first account maintained by the payment service on behalf of a first user associated with the first user device, wherein the incentive becomes available when the incentive is shared with more than a threshold quantity of accounts within a period of time”; and “wherein enabling the incentive functionality for a second account of the group of accounts comprises causing a second user interface of the payment application to be displayed in a foreground of a second user device of a second user of the plurality of respective additional users, without user input from the second user.”). NOTE: The claimed invention is exclusively from the perspective of the “computing system”. The intended use/result by other, unclaimed devices (i.e., “first user device”, “second user device”) is only nominally or tangentially related to the claimed invention.
Adding insignificant extra-solution activity to the judicial exception is not indicative of integration into a practical application. See also, MPEP §2106.05 (g).
Collecting information (e.g., “receiving, by the computing system, from the first user device, user input data indicating a request to share the incentive with a plurality of additional accounts maintained by the payment service on behalf of a plurality of respective additional users;”); analyzing it (e.g., “determining, by the computing system, that a quantity of accounts in a group of accounts comprising the first account and the plurality of additional accounts satisfies the threshold quantity; and enabling, by the computing system, incentive functionality for the group of accounts based at least in part on the quantity satisfying the threshold quantity, wherein the incentive functionality is disabled for at least one account that is not included in the group of accounts, and wherein the incentive functionality enables each account in the group of accounts to use the incentive to purchase an item from a merchant, …..”); and displaying certain results of the collection and analysis (e.g., “causing, by a computing system associated with a payment service, a first user interface of a payment application executing on a first user device to display an incentive indicator representing an incentive that is conditionally available to a first account maintained by the payment service on behalf of a first user associated with the first user device, wherein the incentive becomes available when the incentive is shared with more than a threshold quantity of accounts within a period of time”; and “wherein enabling the incentive functionality for a second account of the group of accounts comprises causing a second user interface of the payment application to be displayed in a foreground of a second user device of a second user of the plurality of respective additional users, without user input from the second user.”) merely indicates a field of use or technical environment in which to apply the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use is not indicative of integration into a practical application. See also, MPEP §2106.05 (h).
In response to applicant's arguments, it is noted that the features upon which applicant relies (i.e., (a) “For example, independent claim 1 has been amended to recite a real time interaction between a plurality of computer components, specifically, the "computing system" of claim 1 and "a second user device of a second user of the plurality of respective additional users." See pg. 12 of applicant’s arguments/ remarks as filed (08/13/26). (b) “Specifically, the additional elements recite a real time update feature for a user interface, which effects a specific improvement over prior art systems by, among other things, allowing a user in the group of users to see the updated user interface quickly and potentially without waiting until user input is received (which may be when connectivity to a network may be absent and thus the updated user interface may not be available).” See pg. 14 of applicant’s arguments/ remarks as filed (08/13/26).) are not recited in the rejected claim(s). NOTE: The claimed invention does not have a “real time”, “update” and/ or “connectivity” requirement. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
(3) Applicant argues inventive concept (i.e., The claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)). Applicant argues the claimed invention is not “nonconventional and nongeneric arrangement of known, conventional pieces”. Applicant argues the claimed invention is not “well-understood, routine and conventional”.
As discussed with respect to Step 2A Prong Two, the additional element(s) 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 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.
Furthermore, the additional element(s) under STEP 2A Prong 2 have been evaluated in STEP 2B to determine if it is more than what is well-understood, routine conventional activity in the field. Applicant’s specification as filed 03/14/25 does not provide any indication that the “computing system” is anything other than a generic off-the-shelf computer components, see at least Figs. 1 and 19, para. [0043] [0044] [0047] [0314] [0315] [0316] [0339] [0340]. Furthermore, the prosecution history of the instant application provides Esch, US Pub. No. 2013/0290186; Kurlas, US Pub. No. 2023/0394458; McGiffin, US Pub. No. 2005/0187881; and Davis, US Pub. No. 2016/0117651 operating in a similar environment, suggesting performing tasks such as (a) data display (e.g., “causing ….. to display”, etc. step(s) as claimed); (b) data receipt/ transmission (e.g., “receiving”, etc. step(s) as claimed); and (c) data processing (e.g., “determining”, “enabling”, etc. step(s) as claimed) are well understood, routine and conventional. See Esch, abstract, Fig. 2, [0011] [0012] [0013] [0014] [0016] [0018] [0019] [0024] [0027] [0028] [0030] [0031] [0032] [0035]. See Kurlas, abstract, Figs. 8, 9, [0005] [0007] [0009] [0011] [0013] [0015] [0018] [0025] [0032] [0039] [0047] [0055] [0108] [0109] [0110] [0187] [0189]. See McGiffin, [0049]. See Davis, [0232] [0233] [0248] [0249] [0251]. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed by applicant (a) data display (e.g., “causing ….. to display”, etc. step(s) as claimed); (b) data receipt/ transmission (e.g., “receiving”, etc. step(s) as claimed); and (c) data processing (e.g., “determining”, “enabling”, etc. step(s) as claimed) are well understood, routine and conventional. SAP America Inc. v. Investpic, LLC, 890 F.3d 1016 USPQ2d 1638 (Fed Cir. 2018) (displaying and disseminating financial information) and Intellectual Ventures 1 LLC v. Capital One Bank (USA) (advanced internet interface providing user display access of customized web pages) indicate displaying information is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Symantec, TLI, OIP Techs and buySAFE court decisions cited in 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 here). Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer.
For these reasons, there is no invention concept in the claim, and thus the claim is ineligible.
Dependent claims 2 - 7 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims). Therefore, independent system claim 8 and independent one or more non-transitory computer-readable media claim 15 is/are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as the method claims. The components (e.g., “one or more processors”, “memory”) described in independent system claim 8 and the components (e.g., “one or more non-transitory computer-readable media”, “one or more processors”) described in independent one or more non-transitory computer-readable media claim 15, add nothing of substance to the underlying abstract idea. At best, the product (system; one or more non-transitory computer-readable media) recited in the claim(s) are merely providing an environment to implement the abstract idea.
Dependent claims 9 - 14 and 16 - 20 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
(4) Applicant argues Bascom. Applicant argues “non-conventional and non-generic arrangement of known, conventional pieces”.
An important aspect of the courts finding with respect to the inventive concept in Bascom was that it was a “non-conventional non-generic arrangement of known conventional, pieces” (i.e., In contrast to the “then-known filtering tools”, Bascom’s claimed invention installed filters at the ISP server.). Applicant’s claimed invention is not comparable to Bascom.
First, applicant’s claimed invention is well-understood, routine conventional. As noted above, applicant’s specification as filed 03/14/25 does not provide any indication that the “computing system” is anything other than a generic, off-the-shelf computer component. Furthermore, the prosecution history of the instant application provides Esch, US Pub. No. 2013/0290186; Kurlas, US Pub. No. 2023/0394458; McGiffin, US Pub. No. 2005/0187881; and Davis, US Pub. No. 2016/0117651 operating in a similar environment, suggesting performing tasks such as (a) data display (e.g., “causing ….. to display”, etc. step(s) as claimed); (b) data receipt/ transmission (e.g., “receiving”, etc. step(s) as claimed); and (c) data processing (e.g., “determining”, “enabling”, etc. step(s) as claimed) are well understood, routine and conventional. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed by applicant such as (a) data display (e.g., “causing ….. to display”, etc. step(s) as claimed); (b) data receipt/ transmission (e.g., “receiving”, etc. step(s) as claimed); and (c) data processing (e.g., “determining”, “enabling”, etc. step(s) as claimed) are well understood, routine and conventional. SAP America Inc. v. Investpic, LLC, 890 F.3d 1016 USPQ2d 1638 (Fed Cir. 2018) (displaying and disseminating financial information) and Intellectual Ventures 1 LLC v. Capital One Bank (USA) (advanced internet interface providing user display access of customized web pages) indicate displaying information is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Symantec, TLI, OIP Techs and buySAFE court decisions cited in 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 here). Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here).
Second, applicant’s claimed invention does not provide “non-conventional non-generic arrangement of known conventional, pieces.” As noted above, applicant’s claimed invention does not provide a “distributed” architecture that renders to the claimed invention “unconventional”. Applicant’s claimed invention is directed to a conventional computer network. Furthermore, all processing and decision making in the claimed invention is done exclusively by a single computer (i.e. “computing system”). In other words, there is no real distribution of tasks in the claimed invention.
(5) Applicant argues Example 21.
First, there is no reasonable comparison between the facts of the instant case and Example 21, claim 2. In Example 21, claim 2 the online/ offline considerations with respect to the subscriber’s computer were critical.
In response to applicant's arguments, it is noted that the features upon which applicant relies (i.e., “For example, paragraph [0164] of Applicant's Specification explains that ‘[t]his may allow for the users to see the updated user interfaces quickly and potentially without waiting until user input is received (which may be when connectivity to a network may be absent and thus the updated user interface may not be available). The users may then interact with the user interface as displayed via the payment application.’ ” See pgs. 17 - 18 of applicant’s arguments/ remarks as filed (08/13/26).) are not recited in the rejected claim(s). NOTE: The claimed invention does not have a “connectivity” requirement. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Second, the facts associated with the claimed invention are more aligned with Example 21, claim 1 from the July 2015 Subject Matter Eligibility Examples which were found to be ineligible.
For example, the claimed invention refers to “determining, by the computing system, that a quantity of accounts in a group of accounts comprising the first account and the plurality of additional accounts satisfies the threshold quantity;”. This language is very similar to the steps directed to “comparing and formatting information for transmission” recited in Example 21, claim 1. In Example 21, claim 1 this language was considered to be simply the organization and comparison of data which can be performed mentally and is an idea of itself.
For example, the claimed invention refers to the steps being performed “by a computing system associated with a payment service”. This language is very similar to the “at a transmission server” language recited in Example 21, claim 1. In Example 21, claim 1 this language was considered to be recited at a high level of generality i.e., as a generic computer performing generic computer functions. Generic computers performing generic computer functions, alone, do not amount to significantly more than the abstract idea.
(6) Applicant argues DDR Holdings. Applicant argues the claimed invention is “necessarily rooted in computer technology.
Applicant is arguing the efficiency of automating an otherwise manual process, basically an “apply it” argument. The claims provide no implementation details. The claims contain little more than a directive to “use the internet” to implement the abstract idea embraced by the claims. The transformation of an abstract idea into patent-eligible subject matter “requires ‘more than simply stat [ing] the [abstract idea while adding the words ‘apply it.’” Alice, 134 S.Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1294). In contrast, the patent claims in DDR Holdings, as described by the Court, “specify how interactions with the Internet are manipulated to yield a desired result.” DDR Holdings, 773 F.3d at 1258.
(7) Applicant argues the claimed invention was not considered “as a whole”.
Applicant’s argument that the claimed invention was not considered “as a whole” is not persuasive. All elements of applicant’s claimed invention have been considered “as a whole”. The elements directed to the abstract idea can be found as part of the 2(A), PRONG 1 analysis on pgs. 4 - 6 above. The additional elements can be found as part of the 2(A), PRONG 2 analysis on pg. 6 - 7 above. The inventive concept can be found as part of the 2(B) analysis on pgs. 7 - 8 above. The dependent claim analysis can be found on pgs. 8 - 9.
Prior Art
Withdrawn in light of applicant’s arguments and/ or amendments.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
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SARA CHANDLER HAMILTON
Primary Examiner
Art Unit 3695
/SARA C HAMILTON/Primary Examiner, Art Unit 3695
