DETAILED ACTION
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 an account of the payment service, wherein the incentive becomes available when the incentive is shared with more than a threshold number of accounts within a period of time; receiving user input data indicating a request to share the incentive with a plurality of additional accounts of the payment service; determining that a number of accounts in a group of accounts comprising the account and the plurality of additional accounts satisfies the threshold number; and
enabling incentive functionality for the group of accounts based at least in part on the number satisfying the threshold number, wherein the incentive functionality is disabled for at least one account who 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 an account of the payment service, wherein the incentive becomes available when the incentive is shared with more than a threshold number of accounts within a period of time; receiving user input data indicating a request to share the incentive with a plurality of additional accounts of the payment service; determining that a number of accounts in a group of accounts comprising the account and the plurality of additional accounts satisfies the threshold number; and enabling incentive functionality for the group of accounts based at least in part on the number satisfying the threshold number, wherein the incentive functionality is disabled for at least one account who 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 an account of the payment service, wherein the incentive becomes available when the incentive is shared with more than a threshold number of accounts within a period of time; receiving user input data indicating a request to share the incentive with a plurality of additional accounts of the payment service; determining that a number of accounts in a group of accounts comprising the account and the plurality of additional accounts satisfies the threshold number; and enabling incentive functionality for the group of accounts based at least in part on the number satisfying the threshold number, wherein the incentive functionality is disabled for at least one account who 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 also recites the combination of additional elements of “causing, by a computing system associated with a payment service, a user interface of a payment application executing on a user device to display …..”. 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 “user interface of a payment application executing on a user device”/ “user device” is referenced in the claimed invention, the claimed invention is not from the perspective of the “user interface of a payment application executing on a user device”/ “user device”. The “user interface of a payment application executing on a user device”/ “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.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1 - 4, 7 - 11 and 14 - 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Esch, US Pub. 2013/0290186 in view of Kurlas, US Pub. No. 2023/0394458.
Re Claims 1, 8 and 15: Esch discloses a computer-implemented method/ system/ one or more non-transitory computer-readable media comprising:
causing, by a computing system associated with a payment service, a user interface of a payment application executing on a user device to display an incentive indicator representing an incentive that is conditionally available to an account of the payment service, wherein the incentive becomes available when the incentive is shared with more than a threshold number of accounts within a period of time (Esch, abstract, Fig. 2, [0011] [0012] [0014] [0016] [0018] [0027] [0028] [0030] [0031] [0032] [0035]);
determining, by the computing system, that a number of accounts in a group of accounts comprising the account and the plurality of additional accounts satisfies the threshold number (Esch, Fig. 2, [0011] [0012] [0024] [0027] [0035]); and
enabling, by the computing system, incentive functionality for the group of accounts based at least in part on the number satisfying the threshold number, wherein the incentive functionality is disabled for at least one account who 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 (Esch, Fig. 2, [0011] [0012] [0013] [0019] [0024] [0027] [0035]).
Esch fails to explicitly disclose:
receiving, by the computing system, from the user device, user input data indicating a request to share the incentive with a plurality of additional accounts of the payment service;
Kurlas discloses:
receiving, by the computing system, from the user device, user input data indicating a request to share the incentive with a plurality of additional accounts of the payment service (Kurlas, abstract, Figs. 8, 9, [0005] [0007] [0009] [0011] [0013] [0015] [0018] [0025] [0032] [0039] [0047] [0055] [0108] [0109] [0110] [0187] [0189]);
Analogous Art it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Esch and Kurlas are in the field of the inventor’s endeavor (i.e., group account/ account functionality; and/or incentive to purchase an item from a merchant).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the teachings of Esch by adopting the teachings of Kurlas to provide receiving, by the computing system, from the user device, user input data indicating a request to share the incentive with a plurality of additional accounts of the payment service.
One would have been motivated to provide customer convenience; and improve flexibility and customization.
The claimed invention applies
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known techniques to improve a similar device (method, or product) in the same way; applies known techniques to a known device (method, or product) ready for improvement to yield predictable results; and
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known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. Thus, the claimed subject matter likely would have been obvious under KSR. KSR, 127 S.Ct. at 1741, 82 USPQ2d at 1396.
Re Claims 2, 9 and 16: Esch in view of Kurlas discloses the claimed invention supra and Kurlas further discloses in response to the receiving the user input data, causing, by the computing system, the user interface to display the incentive indicator in a communication string associated with the group of accounts (Kurlas, abstract, Figs. 8, 9, [0005] [0007] [0009] [0011] [0013] [0015] [0018] [0025] [0032] [0039] [0047] [0055] [0108] [0109] [0110] [0187] [0189]).
Re Claims 3, 10 and 17: Esch in view of Kurlas discloses the claimed invention supra and Esch further discloses wherein the incentive represents a second instance of the incentive that is more valuable than a first instance of the incentive available to the at least one account who is not included in the group of accounts (Esch, abstract, Fig. 2, [0011] [0012] [0014] [0016] [0018] [0027] [0028] [0030] [0031] [0032] [0035]).
Re Claims 4, 11 and 18: Esch in view of Kurlas discloses the claimed invention supra and Esch further discloses wherein the user input data indicates a selection of the incentive indicator (Esch, abstract, Fig. 2, [0011] [0012] [0014] [0016] [0018] [0027] [0028] [0030] [0031] [0032] [0035]).
Re Claims 7 and 14: Esch in view of Kurlas discloses the claimed invention supra and Esch further discloses in response to the enabling the incentive functionality, causing, by the computing system, the user interface to display a representation of the incentive that enables the account to use the incentive to purchase the item from the merchant (Esch, Fig. 2, [0011] [0012] [0013] [0019] [0024] [0027] [0035]).
Claim(s) 5, 12 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Esch, US Pub. 2013/0290186 in view of Kurlas, US Pub. No. 2023/0394458 as applied to claims 1, 8 and 15 above, and further in view of McGiffin, US Pub. No. 20050187881.
Re Claims 5, 12 and 19: Esch in view of Kurlas discloses the claimed invention supra but fails to explicitly disclose wherein:
the user input data is associated with a group data object that associates the group of accounts; and
the enabling the incentive functionality comprises associating the incentive with the group data object.
McGiffin discloses wherein:
the user input data is associated with a group data object that associates the group of accounts (McGiffin, [0049]); and
the enabling the incentive functionality comprises associating the incentive with the group data object (McGiffin, [0049]).
Analogous Art it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, McGiffin are in the field of the inventor’s endeavor (i.e., group account/ account functionality; and/or incentive to purchase an item from a merchant). In this case, McGiffin is reasonably pertinent to the particular problem with which the inventor was concerned (i.e., a group data object that associates the group of accounts).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the teachings of Esch in view of Kurlas by adopting the teachings of McGiffin to provide wherein: the user input data is associated with a group data object that associates the group of accounts; and the enabling the incentive functionality comprises associating the incentive with the group data object.
One would have been motivated to provide improved collaboration.
The claimed invention applies
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known techniques to improve a similar device (method, or product) in the same way; applies known techniques to a known device (method, or product) ready for improvement to yield predictable results; and
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known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. Thus, the claimed subject matter likely would have been obvious under KSR. KSR, 127 S.Ct. at 1741, 82 USPQ2d at 1396.
Claim(s) 6, 13 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Esch, US Pub. 2013/0290186 in view of Kurlas, US Pub. No. 2023/0394458 as applied to claims 1, 8 and 15 above, and further in view of Davis, US Pub. No. 2016/0117651.
Re Claims 6, 13 and 20: Esch in view of Kurlas discloses the claimed invention supra and Esch further discloses determining, by the computing system, the threshold number (See Esch, Fig. 2, [0011] [0012] [0013] [0019] [0024] [0027] [0035]).
Although Esch discloses determining, by the computing system, the threshold number, Esch fails to explicitly disclose using a trained machine learning model.
Davis discloses:
using a trained machine learning model (Davis, [0232] [0233] [0248] [0249] [0251]).
Analogous Art it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Davis is in the field of the inventor’s endeavor (i.e., group account/ account functionality; and/or incentive to purchase an item from a merchant). In this case, Davis is reasonably pertinent to the particular problem with which the inventor was concerned (i.e., using a trained machine learning model).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the teachings of Esch in view of Kurlas by adopting the teachings of Davis to provide determining, by the computing system, the threshold number using a trained machine learning model.
One would have been motivated to provide improved accuracy and efficiency.
The claimed invention applies
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known techniques to improve a similar device (method, or product) in the same way; applies known techniques to a known device (method, or product) ready for improvement to yield predictable results; and
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known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. Thus, the claimed subject matter likely would have been obvious under KSR. KSR, 127 S.Ct. at 1741, 82 USPQ2d at 1396.
Conclusion
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SARA CHANDLER HAMILTON
Primary Examiner
Art Unit 3695
/SARA C HAMILTON/ Primary Examiner, Art Unit 3695
Prosecution Insights