DETAILED ACTION
Response to Amendment
Applicant’s election without traverse of Invention I in the reply filed on 08/03/26 and the election without traverse by Eric Li, Reg. No. 57,618 via telephone on 08/17/26 of species A.1, B.1 and C.1 (claims 2 - 6, 8 - 10 and 12) is acknowledged.
Newly submitted claims 22 - 29 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
I. Previously presented claims 2 - 13, drawn to a method for receiving, at least in part via the payment handler module, a notification that the payment request has been processed, classified in G06Q 20/3267.
II. New claims 22 - 25, drawn to a method for displaying, via the user interface, a notification that the payment request has been processed, classified in G06Q 20/326.
III. New claims 26 - 29, drawn to a method for sending the generated request to the payment provider, classified in G06Q 40/02.
The inventions are independent or distinct, each from the other because:
The following inventions are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable.
Inventions I and II: In the instant case, subcombination I has separate utility such as accessing an electronic interaction between a buyer and a seller of one or more goods or services; displaying, on a first user device of the buyer or a second user device of the seller, a user interface that includes a payment mechanism, wherein the user interface further includes information about the seller or information about the buyer; detecting an engagement of the payment mechanism; generating, based on the detected engagement and at least in part via a payment handler module executing on the first user device or the second user device, a payment request associated with a purchase of the one or more goods or services; transmitting, at least in part via the payment handler module, the generated payment request to a server of a payment provider; and receiving, at least in part via the payment handler module, a notification that the payment request has been processed.
In the instant case, subcombination II has separate utility such as monitoring a signal content of an electronic communication session between a buyer and a seller of one or more goods or services; detecting a specified type of signal in the monitored signal content of the electronic communication session; executing, based on the detecting, a payment handler module on the user device, wherein the payment handler module is associated with a payment mechanism that is displayable via the user interface; sending, to a payment provider based on an engagement of the payment mechanism through the user interface, a payment request associated with a transaction involving the one or more goods or services, wherein the payment request is generated at least in part via the payment handler module; and displaying, via the user interface, a notification that the payment request has been processed.
Inventions I and III: In the instant case, subcombination I has separate utility such as accessing an electronic interaction between a buyer and a seller of one or more goods or services; displaying, on a first user device of the buyer or a second user device of the seller, a user interface that includes a payment mechanism, wherein the user interface further includes information about the seller or information about the buyer; detecting an engagement of the payment mechanism; generating, based on the detected engagement and at least in part via a payment handler module executing on the first user device or the second user device, a payment request associated with a purchase of the one or more goods or services; transmitting, at least in part via the payment handler module, the generated payment request to a server of a payment provider; and receiving, at least in part via the payment handler module, a notification that the payment request has been processed.
In the instant case, subcombination III has separate utility such as causing, during an electronic communication session between a first user and a second user, a user interface that includes a payment field to be displayed on a first user device of the first user; determining that a payment amount has been entered via the payment field; verifying the first user device is a same device that has previously been registered with a payment provider; generating, based on a successful verification of the first user device, a request associated with a payment between the first user and the second user, wherein the payment is for the payment amount entered via the payment field; and sending the generated request to the payment provider.
Inventions II and III: In the instant case, subcombination II has separate utility such as monitoring a signal content of an electronic communication session between a buyer and a seller of one or more goods or services; detecting a specified type of signal in the monitored signal content of the electronic communication session; executing, based on the detecting, a payment handler module on the user device, wherein the payment handler module is associated with a payment mechanism that is displayable via the user interface; sending, to a payment provider based on an engagement of the payment mechanism through the user interface, a payment request associated with a transaction involving the one 4 or more goods or services, wherein the payment request is generated at least in part via the payment handler module; and displaying, via the user interface, a notification that the payment request has been processed.
In the instant case, subcombination III has separate utility such as causing, during an electronic communication session between a first user and a second user, a user interface that includes a payment field to be displayed on a first user device of the first user; determining that a payment amount has been entered via the payment field; verifying the first user device is a same device that has previously been registered with a payment provider; generating, based on a successful verification of the first user device, a request associated with a payment between the first user and the second user, wherein the payment is for the payment amount entered via the payment field; and sending the generated request to the payment provider.
See MPEP § 806.05(d).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 22 - 29 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Thus, previously presented claims 2 - 6, 8 - 10 and 12 have been examined below.
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 2 - 6, 8 - 10 and 12 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 2 - 6, 8 - 10 and 12 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 2, is/are directed to a method (i.e. a process).
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 is involves accessing an electronic interaction between a buyer and a seller of one or more goods or services; displaying a user interface that includes a payment mechanism, wherein the user interface further includes information about the seller or information about the buyer; detecting an engagement of the payment mechanism; generating, based on the detected engagement, a payment request associated with a purchase of the one or more goods or services; transmitting the generated payment request; and receiving a notification that the payment request has been processed, which is a fundamental economic principles or practices (payment request associated with a purchase of one or more goods or services; processing the payment request); commercial or legal (payment request associated with a purchase of one or more goods or services; processing the payment request); and managing personal behavior or relationships or interactions between people (accessing, displaying, detecting, generating, transmitting, receiving).
The mere nominal recitation “a first user device of the buyer or a second user device of the seller”/ “a payment handler module executing on the first user device or the second user device” 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 accessing an electronic interaction between a buyer and a seller of one or more goods or services; displaying a user interface that includes a payment mechanism, wherein the user interface further includes information about the seller or information about the buyer; detecting an engagement of the payment mechanism; generating, based on the detected engagement, a payment request associated with a purchase of the one or more goods or services; transmitting the generated payment request; and receiving a notification that the payment request has been processed.
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 first user device of the buyer or a second user device of the seller”/ “a payment handler module executing on the first user device or the second user device”, nothing in the claim precludes the steps from practically being performed in the mind. For example, but for “a first user device of the buyer or a second user device of the seller”/ “a payment handler module executing on the first user device or the second user device”, the claim encompasses the user manually accessing an electronic interaction between a buyer and a seller of one or more goods or services; displaying a user interface that includes a payment mechanism, wherein the user interface further includes information about the seller or information about the buyer; detecting an engagement of the payment mechanism; generating, based on the detected engagement, a payment request associated with a purchase of the one or more goods or services; transmitting the generated payment request; and receiving a notification that the payment request has been processed. NOTE: (a) The claim is exclusively from the perspective of “a first user device of the buyer or a second user device of the seller”/ “a payment handler module executing on the first user device or the second user device”. (b) Although “a server of a payment provider” is referenced in the claim(s), the claimed invention is not from the perspective of the “server of a payment provider”; and the “server of a payment provider” does not perform any of the positively recited steps or acts required of the claimed invention. The “server of a payment provider” merely interacts with the entity (i.e., “a first user device of the buyer or a second user device of the seller”/ “a payment handler module executing on the first user device or the second user device”) that performs some of the positively recited steps or acts.
The mere nominal recitation of “a first user device of the buyer or a second user device of the seller”/ “a payment handler module executing on the first user device or the second user device” 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 “a first user device of the buyer or a second user device of the seller”/ “a payment handler module executing on the first user device or the second user device” performing some of the positively recited steps or acts. The claim recites the combination of additional elements of the “transmitting” step being “to a server of a payment provider”. 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 receipt/ transmission (e.g., “accessing”, “transmitting”, “receiving” etc. step(s) as claimed); (b) data processing (e.g., “detecting”, “generating”, etc. step(s) as claimed); and (c) data display (e.g., “displaying”, 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 payment request data), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The “a first user device of the buyer or a second user device of the seller”/ “a payment handler module executing on the first user device or the second user device” that performs some of the step(s) is also recited at a high level of generality, and merely automates the step(s). At best the “a first user device of the buyer or a second user device of the seller”/ “a payment handler module executing on the first user device or the second user device” is no more than mere instructions to apply the exception using generic computer components. Accordingly, the additional element(s) do 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.
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 05/06/25 does not provide any indication that “a first user device of the buyer or a second user device of the seller”/ “a payment handler module executing on the first user device or the second user device” is anything other than a generic off-the-shelf computer components. Furthermore, the prosecution history of the instant application provides Woon, Korean Pub. No. KR 100639906B1 (machine generated English translation of application KR 20050049885 relied upon in rejection below); and Mukherjee, US Pub. No. 2013/0024366 operating in a similar environment, suggesting performing tasks such as (a) data receipt/ transmission (e.g., “accessing”, “transmitting”, “receiving” etc. step(s) as claimed); (b) data processing (e.g., “detecting”, “generating”, etc. step(s) as claimed); and (c) data display (e.g., “displaying”, 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 receipt/ transmission (e.g., “accessing”, “transmitting”, “receiving” etc. step(s) as claimed); (b) data processing (e.g., “detecting”, “generating”, etc. step(s) as claimed); and (c) data display (e.g., “displaying”, etc. step(s) as claimed) are well understood, routine and conventional. 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). 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). 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(s), and thus the claim(s) are ineligible.
Dependent claims 3 - 6, 8 - 10 and 12 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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.
Claims 2 - 6, 8 - 10 and 12 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Woon, Korean Pub. No. KR 100639906B1 (machine generated English translation of application KR 20050049885 relied upon in rejection below) in view of Mukherjee, US Pub. No. 2013/0024366.
Re Claim 2: Woon discloses method, comprising:
accessing an electronic interaction between a buyer and a seller of one or more goods or services (Woon, abstract, [0019] [0030] [0031] [0046] [0051] [0053] [0134] [0137]);
displaying, on a first user device of the buyer or a second user device of the seller, a user interface that includes a payment mechanism, wherein the user interface further includes information about the seller or information about the buyer (Woon, [0019] [0030] [0031] [0137]);
detecting an engagement of the payment mechanism (Woon, [0019] [0030] [0031] [0137]);
generating, based on the detected engagement and at least in part via a payment handler module executing on the first user device or the second user device, a payment request associated with a purchase of the one or more goods or services (Woon, [0022] [0030] [0031] [0032]);
Woon fails to explicitly disclose:
transmitting, at least in part via the payment handler module, the generated payment request to a server of a payment provider; and
receiving, at least in part via the payment handler module, a notification that the payment request has been processed.
Mukherjee discloses:
transmitting, at least in part via the payment handler module, the generated payment request to a server of a payment provider (Mukherjee, abstract, [0007] [0008] [0009] [0019] [0028] [0032]); and
receiving, at least in part via the payment handler module, a notification that the payment request has been processed (Mukherjee, abstract, [0007] [0008] [0009] [0026] [0039]).
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, both Woon and Mukherjee are in the field of the inventor’s endeavor as they relate to facilitating electronic commerce and financial transactions. In this case, Woon is reasonably pertinent to the particular problem with which the inventor was concerned of facilitating transactions during a phone call. In this case, Mukherjee is reasonably pertinent to the particular problem with which the inventor was concerned of integrated access to payment service providers.
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 Woon by adopting the teachings of Mukherjee to provide transmitting, at least in part via the payment handler module, the generated payment request to a server of a payment provider; and receiving, at least in part via the payment handler module, a notification that the payment request has been processed.
One would have been motivated to provide increased flexibility and convenience.
The claimed invention uses known techniques to improve a similar invention in the same way. The claimed invention applies known techniques to a known method invention ready for improvement to yield predictable results. 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 Claim 3: Woon in view of Mukherjee discloses the claimed invention supra and Woon further discloses wherein the user interface is displayed while the electronic interaction is ongoing (Woon, abstract, [0019] [0030] [0031] [0046] [0051] [0053] [0134] [0137]).
Re Claim 4: Woon in view of Mukherjee discloses the claimed invention supra and Woon further discloses wherein the payment mechanism comprises a payment button that, when engaged, triggers an execution of the payment handler module on the first user device or the second user device (Woon, [0019] [0030] [0031] [0137]).
Re Claim 5: Woon in view of Mukherjee discloses the claimed invention supra and Woon further discloses wherein the payment mechanism further comprises a mechanism that enables a payment amount to be entered (Woon, [0019] [0030] [0031] [0137]).
Re Claim 6: Woon in view of Mukherjee discloses the claimed invention supra and Woon further discloses wherein:
the displaying comprises displaying the user interface on the first user device of the buyer (Woon, [0019] [0030] [0031] [0058] [0059] [0060] [0061] [0062] [0066] [0137]);
the user interface includes the information about the seller that contains an identifier of the seller (Woon, [0019] [0030] [0031] [0058] [0059] [0060] [0061] [0062] [0066] [0137]); and the identifier of the seller is automatically retrieved from a local storage of the first user device before being displayed (Woon, [0019] [0030] [0031] [0058] [0059] [0060] [0061] [0062] [0066] [0137]).
Re Claim 8: Woon in view of Mukherjee discloses the claimed invention supra and Woon further discloses wherein the electronic interaction comprises a telephone call, and wherein the method further comprises:
monitoring an audio stream of the telephone call (Woon, abstract, [0019] [0030] [0031] [0046] [0051] [0053] [0134] [0137]); and
activating the payment handler module on the first user device or on the second user device based on a determination that the monitored audio stream contains a specified type of signal (Woon, abstract, [0019] [0030] [0031] [0046] [0051] [0053] [0134] [0137]).
Re Claim 9: Woon in view of Mukherjee discloses the claimed invention supra and Woon further discloses
extracting, from the information displayed on the user interface, a telephone number of the seller or a telephone number of the buyer (Woon, [0019] [0030] [0031] [0058] [0059] [0060] [0061] [0062] [0066] [0137]),
wherein the payment handler module generates the payment request based on the extracted telephone number of the seller or the extracted telephone number of the buyer (Woon, [0022] [0030] [0031] [0032]).
Re Claim 10: Woon in view of Mukherjee discloses the claimed invention supra and Woon further discloses
authenticating, before the payment request is generated, the first user device or the second user device based on a first hardware identifier of the first user device or a second hardware identifier of the second user device, respectively, that has been previously registered with the payment provider (Woon, [0025] [0074] [0075] [0076]).
Re Claim 12: Woon in view of Mukherjee discloses the claimed invention supra and Mukherjee further discloses
wherein the generated payment request is transmitted at least in part via an Application Programming Interface (API) call (Mukherjee, abstract, [0007] [0008] [0009] [0019] [0028] [0032] [0047]).
Conclusion
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SARA CHANDLER HAMILTON
Primary Examiner
Art Unit 3695
/SARA C HAMILTON/Primary Examiner, Art Unit 3695
Prosecution Insights