Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1-12 are currently pending and are presented for examination on the merits.
Priority
Applicant's claim for the benefit of U.S. provisional patent application 62230430 filed on 5 June 2015 (and progeny), under 35 U.S.C. 119(e), and 120 is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 1/15/2026, 1/2/2026, 11/14/2025, 10/21/2025, 9/16/2025, 8/13/2025, 7/25/2025, 7/16/2025, 6/19/2025, and 6/11/2025 were filed before the filing of a first office action on the merits. As such, the submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Objections
Specification
The use of trademarks, such as “Apple, Inc.," has been noted in this application. All trademarks should be capitalized wherever they appear (or include a proper trademark symbol) and be accompanied by the generic terminology. Although the use of trademarks is permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as trademarks. MPEP 608.01(v).
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 1-12 are rejected under 35 U.S.C. § 101, because they recite non-patent eligible subject matter, under MPEP § 2106. The claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, when considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. See, generally, MPEP § 2106; Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
Under MPEP § 2106, Step 1, Claims 1-12, taking the broadest reasonable interpretation, recites a process (i.e., a method), machine (e.g., apparatus, system, etc.), article of manufacture (e.g., a non-transitory computer readable medium) or composition of matter, and as such, are patent eligible.
Under Step 2a-prong 1, Claims 1-12 are directed to a process, system, and product that recite a method of organizing human activity, and therefore, an abstract idea (e.g., a fundamental economic practice). More particularly, the claims recite inventions directed to executing financial transactions based on location-based information (e.g., a preferred form of payment). As such, the claims are economic in nature, and reflect a long-standing commercial practice. Under Alice Corporation and MPEP § 2106, such subject matter is deemed patent ineligible, without providing a practical application or significantly more.
Under step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., the structure—an electronic device, one or more processors, memory, location sensor, a display, etc.) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)) and/or generally instruct an artisan to apply it (the method) across generic computing technology. A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. See Alice, 573 U.S. at 222; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). That is to say, the claims are not directed to a new software or computer, but rather employs pre-existing software to do what’s been previously done, albeit less efficiently or slower. “[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citations omitted). More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (§ 2106.05(e)).
Under part 2b, the additional elements offered by the dependent claims either further delineate the abstract idea (e.g, Claims 4,5,7), add further abstract idea(s) (e.g., Claims 8,9), adds insignificant extra-solution activity (e.g., Claims 4), or further instruct the artisan to apply it (the abstract idea(s)) across generic computing technology (e.g., Claims 2,3,5,6,9,10). The claims as a whole, do not amount to significantly more than the abstract idea itself. The additional limitations drawn towards the provision of payment information associated with a location are conventional methods of payment that are being applied in a routine and conventional manner. For example, it has long been preferable or necessary to manually retrieve a particular payment/loyalty card for presentment upon arrival at the location of a merchant (e.g., Costco/Sam’s Club membership cards, merchant credit cards, etc.). The use of generic computer technology to automatically present such information on the display of a smart phone may be more efficient, but it fails to offer significantly more. The claims do not effect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular, albeit well-understood, routine and conventional technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Under Alice, merely applying or executing the abstract idea on one or more generic computer system (e.g., a mobile device) to carry out the abstract idea more efficiently fails to cure patent ineligibility.
Lastly, courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data, MPEP 2106.05(d), wherein the italicized tasks are particularly germane to the instant invention.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-12 are rejected under 35 U.S.C. §103 as being unpatentable over US 2013/0282502 to Jooste, in view of US 2015/0012425 to Mathew.
With respect to Claims 1, 11, and 12, Jooste teaches a method (FIGS. 2-5) of, a non-transitory computer-readable storage medium (claim 11 therein) for, an electronic device that is in communication with a display ([0100]; FIG. 1: 121) and a location sensor ([0100]), comprising: one or more processors (FIG. 6); and memory storing one or more programs configured to be executed by the one or more processors, the one or more programs including instructions for: receiving an input requesting to enable the electronic device for a payment transaction (Abstract); and in response to receiving the input: detecting, via the location sensor, a current location ([0065];[0103]); determining whether a set of one or more payment criteria have been met ([0065];[0084-85], rules), wherein the set of one or more payment criteria includes a criterion that is met when the current location is associated with a first payment account ([0065]); in accordance with a determination that the set of one or more payment criteria is not met, displaying a default payment account, wherein the default payment account is different from the first payment account ([0085]); and in accordance with a determination that the set of one or more payment criteria is met, displaying, the first payment account ([0063-65]).
Although Jooste teaches an interface 121 on the mobile device (which conventionally displays information), it fails to expressly teach “displaying on a display, a visual indication” of the first and default payment accounts as recited. However, Mathews teaches displaying visual indications of the first payment account, and the default payment accounts where the criteria is and is not met (FIGS. 7, 8). Mathews teaches there being a need to automatically determine and provide recommendations to consumers concerning which of a plurality of payment cards to utilize ([0005-06]). As such, it would have been obvious to one of ordinary skill in the art to modify Jooste to include displaying a visual indication of the first and default payment accounts as recited, in order to provide the recommendations to the consumer as to which payment card/account to utilize.
With respect to Claim 2, Jooste teaches wherein the electronic device includes one or more wireless communication elements ([0020];[0100]), and wherein the one or more programs further include instructions for: in accordance with the determination that the set of one or more payment criteria is met, enabling the electronic device to participate in a transaction using the first payment account via the one or more wireless communication elements ([0020];[0032]).
With respect to Claim 3, Jooste teaches wherein the electronic device includes one or more wireless communication elements ([0020];[0100]), and wherein the one or more programs further include instructions for: in accordance with the determination that the set of one or more payment criteria is not met, enabling the electronic device to participate in a transaction using the default payment account via the one or more wireless communication elements ([0020];[0032]).
With respect to Claim 4, Jooste fails to expressly teach, but Mathews teaches wherein the one or more programs further include instructions for: in accordance with the determination that the set of one or more payment criteria is not met, forgoing displaying, on the display, the visual indication of the first payment account. ([0046], limiting display of accounts; FIG. 7 showing only 1 selected card). Under the same rationale as Claim 1, it would have been obvious to one of ordinary skill in the art to modify Jooste to include this limitation taught by Mathews.
With respect to Claim 5, Jooste teaches wherein the electronic device includes a touch-sensitive surface ([0100], “touch-screens,” “touchpads,” “trackballs”) and one or more wireless communication elements ([0020]), and wherein the one or more programs further include instructions for: receiving one or more inputs in a first direction (“trackball”). Jooste fails to expressly teach, but Mathews teaches in response to receiving the input(s): displaying, on the display, a second visual indicator identifying a second account different from the first payment account and the default payment account (FIG. 7); and enabling the electronic device to participate in a transaction using the second account via the one or more wireless communication elements (FIG. 7).
With respect to Claim 6, Jooste teaches wherein the electronic device includes one or more wireless communication elements ([0020]), and wherein the one or more programs further include instructions for: receiving a request for account information from a contactless payment terminal (Abstract; [0032]); and in response to receiving a request for account information, transmitting, via the one or more wireless communication elements, account information for a respective enabled account to the contactless payment terminal, wherein the account information enables the contactless payment terminal to engage in the payment transaction ([0032]).
With respect to Claim 7, Jooste teaches wherein the set of one or more criteria includes a criterion that is met when the electronic device is authorized to use the first payment account for transactions at the current location ([0065];[0103]).
With respect to Claim 8, Jooste teaches wherein the one or more programs further include instructions for: determining that the current location is associated with a loyalty account; and concurrently displaying, on the display, a visual indication of the loyalty account along with a respective visual indication of a payment account. [0015];[0021];[0031];[0062]
With respect to Claim 9, Jooste teaches wherein the electronic device includes one or more input devices ([0100]), and wherein the one or more programs further include instructions for: prior to receiving the input requesting to enable the electronic device for a payment transaction (FIG. 2): receiving a request to link a payment account with the electronic device, the request comprising account information of the payment account ([0062]); linking the payment account with the electronic device ([0062]); determining that a financial institution associated with the payment account has authorized the payment account for selection based on location without requiring user input ([0027], when card is activated it can be used at a location without further input;[0032]); and receiving user input activating the payment account for selection based on location without requiring user input ([0027];[0032]). Moreover, Mathews teaches once smart preferences is turned on, it automatically selects the card (based on location) without user input. Under the same rationale as Claim 1, it would have been obvious to one of ordinary skill in the art to modify Jooste to include this limitation taught by Mathews.
With respect to Claim 10, Jooste teaches wherein the electronic device includes one or more wireless communication elements ([0014];[0020];[0032]), and wherein the one or more programs further include instructions for: in accordance with the determination that the set of one or more payment criteria is met, enabling the electronic device to participate in a transaction using the first payment account via the one or more wireless communication elements ([0032]); receiving a request associated with a payment transaction from a contactless payment terminal (FIG. 2); determining whether the request includes a request for payment account information using an account type corresponding to a second payment account different from the first payment account ([0085], a second transaction at a second location in the future teaches this); and in accordance with a determination that the request includes a request for payment information using the account type corresponding to the second payment account, providing a notification requesting authorization to transmit, using one or more wireless communication elements ([0014];[0032]), payment account information of the second payment account to the contactless payment terminal (FIG. 2), wherein the payment account information of the second payment account enables the contactless payment terminal to engage in the payment transaction. It is noted that mere redundancy, duplicity, or repetition of existing structure or steps has been deemed obvious under § 103 analysis. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. See also, MPEP § 2144.05 which states: In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J JACOB, whose telephone number is (571)270-3082. The examiner can normally be reached on M-F 8:00-5:00, alternating Fri. off.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mathew Gart can be reached on 5712723599. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM J JACOB/ Examiner, Art Unit 3696
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