DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The following is a Final Office Action in response to communications received August 13, 2026. Claim 2 has been canceled. Claims 1, 4-8, 11-15 and 17-19 have been amended. No new claims have been added. Therefore, claims 1-20 are pending and addressed below.
Priority
Application No. 19219651 filed 05/27/2025 Claims Priority from Provisional Application 63651757 , filed 05/24/2024
Applicant Name/Assignee: JP Morgan Chase Bank, NA
Inventor(s): Gean, Gerardo; Vudathu, Raghu; Loncaric, Goran; Shorrosh, Maurice; Banala, Sandeen Reedy
Claim Interpretation
Claim 8 recites the limitation "the provider is configured to generate a machine readable code". The specification ¶ 0049, describes "the provider of the good or service may generate a machine readable code for a transaction" lacking any technical details and therefore, can be implemented by any known means. The specification discloses a "provider" as a service provide (e.g. waiter) (¶ 0032) or as a server, computer to execute provider computer program (¶ 0044). In the context of the claim limitations the examiner is interpreting the "provider" as disclosed in ¶ 0044.
Response to Arguments/Amendments
Claim Rejections - 35 USC § 101
Applicant's arguments filed 08/13/2026 have been fully considered but they are not persuasive.
In the remarks applicant argues the previous Office Action considering the USPTP 101 2019 PEG guidance of step 2A, the claim limitation under prong 1 is not directed toward any of the enumerated abstract concepts. Applicant states that the claimed limitations are not directed toward mathematical concepts, certain methods of organizing human activities or mental process but instead recite interaction between machines. The execution of a mobile application between a customer device and electronic device for a provider of goods/services and provider website. These interactions between the devices allow a customer device to read payment data from a physical financial instrument for a merchant and provide payment information to the provider’s website. Applicant argues that although the limitations conduct a transaction, the claims provide functionality to the provider – financial equipment reading capability that the provider might not otherwise have. Applicant’s argument is not persuasive. The focus of the invention is not technology, rather the process as a whole is directed toward a transaction process by reading a code with a URL code of a good/service for a transaction, accessing the URL, receiving a payment option, receiving payment information, providing the payment information from the device to the provider website and receiving confirmation of a payment. The claim limitations therefore, are directed toward a transaction/sales activity. A sub-category of the abstract category of methods of organizing human activity. The rejection is maintained.
In the remarks applicant discusses the requirements of step 2A prong 2, for evaluating patent eligibility listing the indications of USPTO 2019 101 PEG guidance. Applicant argues the claimed interactions between machines (mobile device executing mobile applications and electronic device of providers) that allow customer device to read payment data from a physical financial instrument for a merchant and then provide the payment information to provider website provide functionality (financial instrument reading capability) that the provider might not otherwise have. The applicant points to ¶0031 of the specification, arguing the wirelessly reading of the financial instrument on customer device allowing the customer to pay by tap without being present at POS integrate any alleged abstract idea into a practical application. Applicant’s argument is not persuasive. The specification discloses different options in technology that can be used to provide payment information to the merchant. The specification does not focus on the technology itself but instead different generic means using different communication technology to provide data to perform a transaction. The claim limitations similarly recite applying technology at a high level for implementing the transaction process. The limitations are not directed toward the technology itself. The rejection is maintained.
In the remarks Applicant points to MPEP 2106.04(d), MPEP 2106.04(e) guidance and example 46 with guidance as to meaningful limitations found in claims which employ judicial exceptions. Applicant argues the user of information by the judicial exception as a machine readable code to direct the application to providers website to the customer can tap the financial instrument to provide information to provider website. This extends the functionality of the provider’s POS so the provider can receive payment data without providing its device. Applicant argues the process as a combination amounts to significantly more than the alleged abstract idea. The examiner respectfully disagrees. The ordered combination is not directed toward communication technology or the improvement thereof, rather the ordered combination is directed toward a transaction processes which uses a communication means in technology to transmit data. The courts have recognized the following computer functions are claimed in a merely generic manner (e.g., at a high level of generality) where technology is merely applied to perform the abstract idea or as insignificant extra-solution activity.
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014)
See MPEP 2106.05 (d) and MPEP 2106.05 (g). The rejection is maintained.
Claim Rejections - 35 USC § 102/103
The amendments of the claim limitations are sufficient to overcome the 102 rejection, the 102 rejection has been withdrawn and new 103 rejection with updated art has been provided 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 1-20 are rejected under 35 U.S.C. § 101 because the instant application is directed to non-patentable subject matter. Specifically, the claims are directed toward at least one judicial exception without reciting additional elements that amount to significantly more than the judicial exception. The rationale for this determination is in accordance with the guidelines of USPTO, applies to all statutory categories, and is explained in detail below.
In reference to Claim(s) 1-7:
STEP 1. Per Step 1 of the two-step analysis, the claims are determined to include a method, as in independent Claim 1 and the dependent claims. Such methods fall under the statutory category of "process." Therefore, the claims are directed to a statutory eligibility category.
STEP 2A Prong 1. The claimed invention is directed to an abstract idea as enumerated under the 101 statute. Method claim 1 recites steps (1) reading a machines readable code (2) assessing …the URL (3) receiving…a payment by tap option (4) receiving…payment information (5) providing …payment information…(6) receiving …confirmation of payment.
The claimed limitations which under its broadest reasonable interpretation, covers performance of a transaction. The specification describes that the claimed invention is directed toward a payment process that lessens the requirements for passcodes by using a received URL that is read and applying a tap payment option interface for receiving payment information that is then provided and confirmed for the transaction. (spec ¶ 0003-0004). Therefore, when considered as a whole the claimed subject matter is directed toward a method for performing a transaction that does not require passcodes or the like.
Such concepts can be found in the abstract category of commercial interactions. These concepts are enumerated in Section I of the 2019 revised patent subject matter eligibility guidance published in the federal register (84 FR 50) on January 7, 2019) is directed toward abstract category of methods of organizing human activity.
STEP 2A Prong 2: The identified judicial exception is not integrated into a practical application because the claims fail to provide indications of patent eligible subject matter that integrate the alleged abstract idea into a practical application. The additional elements recited in the claim beyond the abstract idea include a mobile application,
The claimed mobile application (software per se) applied to perform the operations of “reading…a machine readable code…”, “receiving…a payment by tap option”, “receiving…payment information”, “providing …payment information” and “receiving…confirmation of payment”, which according to MPEP 2106.05(d) II (see also MPEP 2106.05(g)) the courts have recognized the following computer functions are claimed in a merely generic manner (e.g., at a high level of generality) where technology is merely applied to perform the abstract idea or as insignificant extra-solution activity.
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014)
Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
The claim limitations (receiving, providing, reading) are recited at a high level of generality without details of technical implementation and thus are insignificant extra solution activity.
The additional element “mobile application” (software per se) is additionally applied to perform the operation “accessing…the URL” which is directed toward using technology to access a web resource locator. This limitation is recited at a high-level of generality such that it amounts to no more than mere instructions to perform a step in a transaction process.
The claim limitations when considered individually fail to provide any indications of patent eligible subject matter, according to MPEP guidance (see MPEP 2106.05 (a)-(c), (e )-(h).
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological environment.
When the claims are taken as an ordered combination or as a whole, the combination of limitations, the combination of limitations 1-2 are directed toward receiving a code comprising an embedded link to provider website at a provider url and accessing the URL -which as a combination is directed toward a transaction related process and not any indications of patent eligibility under step 2A prong 2. The combination of limitations 1-2 and 3-4 is directed toward receiving payment information upon accessing the provider URL of limitations 1-2, which is not directed toward any technology or technical improvement or a problem in technology but rather to receive payment formation for a transaction. The combination of limitations 1-4 and 5-6 is directed toward providing the payment information to the provider of limitations 1-4 and receiving a confirmation of payment – which is not directed toward any technology or technical improvement or a problem in technology but rather the confirmation of a payment of a transaction. Therefore, when considered as a whole or ordered combination the combination of limitations 1-6 is directed toward a payment process.
The wherein clause “wherein the machine- readable code is provided by an electronic device for the provider” does not further limit the functional process “reading” by the mobile application, instead merely further limits the source of the machine-readable code. The wherein clause “wherein the mobile application is configured to receive payment information from a physical financial instrument wirelessly”, does not further limit the functional process of “receiving…a payment by tap option”, instead further limits the source of the payment information.
The combinations of parts is not directed toward any of the indications of patent eligible subject matter under step 2A prong 2, but instead a deposit transaction activity and risk mitigation to prevent fraud. MPEP guidance (see MPEP 2106.05 (a)-(c), (e )-(h)
The claim limitations as a whole, as an ordered combination and the combination of steps not integrate the judicial exception into a practical application as the claim process fails to impose meaningful limits upon the abstract idea. This is because the claimed subject matter recites applying software per se used to perform a transaction failing to provide additional elements or combination or elements that go beyond applying technology as a tool to perform the identified abstract idea. The functions recited by the mobile application (software per se) in the claims recite the concept of a financial activity. The claim limitations and specification lacks technical disclosure on what the technical problem was and how the claimed limitations provide a technical solution to a technical problem rather than a solution to a problem found in the abstract idea. Taking the claim elements separately, or as a combination, the operation performed by the mobile application (software per se) at each step of the process is purely in terms of results desired and devoid of implementation of details. Technology is not integral to the process as the claimed subject matter is so high level that any generic programming could be applied and the functions could be performed by any known means.
Furthermore, the claimed limitations do not provide an operation that could be considered as sufficient to provide a technological implementation or application of/or improvement to this concept (i.e. integrated into a practical application).
The integration of elements do not improve upon technology or improve upon computer functionality or capability in how computers carry out one of their basic functions. The integration of elements do not provide a process that allows computers/technology to perform functions that previously could not be performed. The integration of elements do not provide a process which applies a relationship to apply a new way of using an application. The limitations do not recite a specific use machine or the transformation of an article to a different state or thing. The limitations do not provide other meaningful limits beyond generally linking the use of the abstract idea to a particular technological environment. The resource claimed performing the steps is merely a “field of use” application of technology. The instant application, therefore, still appears only to implement the abstract idea to the particular technological environments apply what generic computer functionality in the related arts. The steps are still a combination made to perform a financial activity and does not provide any of the determined indications of patent eligibility set forth in the 2019 USPTO 101 guidance. The additional steps only add to those abstract ideas using generic functions, and the claims do not show improved ways of, for example, an particular technical function for performing the abstract idea that imposes meaningful limits upon the abstract idea.
Moreover, Examiner was not able to identify any specific technological processes that goes beyond merely confining the abstract idea in a particular technological environment, which, when considered in the ordered combination with the other steps, could have transformed the nature of the abstract idea previously identified. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim provides no technical details regarding how the operations performed by the “mobile application”. Instead, similar to the claims at issue in Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332 (Fed. Cir. 2017), “the claim language . . . provides only a result-oriented solution with insufficient detail for how a computer accomplishes it. Our law demands more.” Intellectual Ventures, 850 F.3d at 1342 (citing Elec. Power Grp. LLC v. Alstom, S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016)). The claim is directed to an abstract idea.
STEP 2B; The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to concepts of the abstract idea into a practical application. The additional elements recited in the claim beyond the abstract idea include a mobile application. The claimed mobile application (software per se) applied to perform the operations of “reading a machines readable code”, “assessing …the URL”, “receiving…a payment by tap option”, “receiving…payment information”, “providing …payment information…” and “receiving …confirmation of payment” when taken separately, except for the “accessing” step in the method, the steps “reading”, “receiving” and “providing” steps are well understood insignificant extra solution activity. Using a computer technology to access a website using URL and tap options for receiving data ----are some of the most basic functions of a computer technology.
In reference to Alice, limitations which are considered well understood and are merely applying technology to implement the abstract idea, are not enough to qualify as “significantly more” with an abstract idea. The claimed limitations amount to no more than mere instructions to implement the abstract idea on a computer or requiring no more than a generic compute to perform generic computer functions that are well understood activities known to the industry. As a result, none of the hardware recited by the system claims offers a meaningful limitation beyond generally linking the use of the method to a particular technological environment, that is, implementation via computers.... The claim limitations do not recite that any of the “devices” perform more than a high level generic function ... . None of the limitations recite technological implementation details for any of these steps, but instead recite only results desired to be achieved by any and all possible means.... Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
When the claims are taken as a whole, as an ordered combination, the combination of steps does not add “significantly more” by virtue of considering the steps as a whole, as an ordered combination. The ordered combination of limitations recited well understood routine technical process for providing and receiving data in a transaction process. The “accessing” step in combination with the receiving of data from providers and providing payment information does not provide any specific or technical process which would qualify as significantly more. All of these computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) "Absent a possible narrower construction of the terms “reading”, “accessing”, “receiving”, “providing” ... are functions can be achieved by any general purpose computer without special programming". None of these activities are used in some unconventional manner nor do any produce some unexpected result. In short, each step whether considered individually or as a combination does no more than require a generic computer to perform generic computer functions to perform the abstract idea.
As to the data operated upon, "even if a process of collecting and analyzing information is 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than abstract." SAP America, Inc. v. Invest Pic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Applicant’s claimed functions add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis modification-transmission is equally generic and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited as an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). The ordering of the steps is therefore ordinary and conventional. The analysis concludes that the claims do not provide an inventive concept because the additional elements recited in the claims do not provide significantly more than the recited judicial exception.
According to 2106.05 well-understood and routine processes to perform the abstract idea is not sufficient to transform the claim into patent eligibility. As evidence the examiner provides:
MPEP 2106.05(g)) the courts have recognized the following computer functions are claimed in a merely generic manner (e.g., at a high level of generality) where technology is merely applied to perform the abstract idea or as insignificant extra-solution activity.
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014)
Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
The instant application, therefore, still appears to only implement the abstract ideas to the particular technological environments using what is generic components and functions in the related arts. The claim is not patent eligible.
The remaining dependent claims—which impose additional limitations—also fail to claim patent-eligible subject matter because the limitations cannot be considered statutory. In reference to claims 2-7 these dependent claim have also been reviewed with the same analysis as independent claim 1. Dependent claim 2 is directed toward limiting the readable code comprising a QR code-well understood in the art of transaction. Dependent claim 3 is directed toward readable code provided on an invoice- directed toward a transaction process without any technical details. Dependent claim 4 is directed toward readable code dynamic and specific to transaction- the specification discloses para 0051 “the machine-readable code may be dynamic
and specific to the transaction involving the good or service; in another
embodiment, the machine-readable code may be static and may be associated
with the location where the good or service is provided or received (e.g., a table
at a restaurant, a vehicle, etc.).”, and therefore, directed toward conditions of the transaction process. Dependent claim 5 is directed toward the readable code static and associated with a location- - the specification discloses para 0051 “the machine-readable code may be dynamic and specific to the transaction involving the good or service; in another embodiment, the machine-readable code may be static and may be associated with the location where the good or service is provided or received (e.g., a table at a restaurant, a vehicle, etc.).”, and therefore, directed toward the conditions of a transaction process. Dependent claim 6 is directed toward reading payment information using near field communications-well understood in the art. Dependent claim 7 is directed toward readable code comprises an identifier and connects to provider network- directed toward with respect to the identifier a transaction process and with respect to connects to provider network, claim 1 discloses readable code comprising an embedded URL link, connecting to provider networks via URL is well understood in the art.
The dependent claim(s) have been examined individually and in combination with the preceding claims, however they do not cure the deficiencies of claim 1. Where all claims are directed to the same abstract idea, “addressing each claim of the asserted patents [is] unnecessary.” Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 7 Ass ’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014). If applicant believes the dependent claims 2-7 are directed towards patent eligible subject matter, they are invited to point out the specific limitations in the claim that are directed towards patent eligible subject matter.
In reference to claim(s) 8-14:
STEP 1. Per Step 1 of the two-step analysis, the claims are determined to include a system, as in independent Claim 8 and the dependent claims. Such methods fall under the statutory category of "machine." Therefore, the claims are directed to a statutory eligibility category.
STEP 2A Prong 1. The claimed invention is directed to an abstract idea without significantly more. System claim 8 recites operations for performing a payment for a transaction. The operations include (1) generate machine readable code for transaction comprising embedded URL link (2) read machine readable code using mobile application (3) access URL using mobile application (4) receive a payment using mobile application tap option (5) using mobile application to provide payment information (6) execute payment for transaction using payment information (7) receive confirmation of payment using mobile application. The claimed limitations which under its broadest reasonable interpretation, covers performance of a transaction. The specification describes that the claimed invention is directed toward a payment process that lessens the requirements for passcodes by using a received URL that is read and applying a tap payment option interface for receiving payment information that is then provided and confirmed for the transaction. (spec ¶ 0003-0004). Therefore, when considered as a whole the claimed subject matter is directed toward a method for performing a transaction that does not require passcodes or the like.
Such concepts can be found in the abstract category of commercial interactions. These concepts are enumerated in Section I of the 2019 revised patent subject matter eligibility guidance published in the federal register (84 FR 50) on January 7, 2019) is directed toward abstract category of methods of organizing human activity.
STEP 2A Prong 2: The identified judicial exception is not integrated into a practical application because the claims fail to provide indications of patent eligible subject matter that integrate the alleged abstract idea into a practical application. The additional elements recited in the claim beyond the abstract idea include system comprising a mobile device executing a mobile application, device hosting a provider website for a provider and a provider (see claim interpretation above).
The provider configured to generate a machine readable code for a transaction comprising an embedded link to URL and the provider is configured to execute payment for transaction using payment information. In reference to Dejardens, the specification lacks any technical description of the technical details as to the how the provider is configured to generate machine readable code embedded with a URL (¶0011) or “provider configured to execute payment…” (¶ 0044), instead reciting high level functions with expected results. The generation of the machine readable code is high level and can be implemented by any known means. The specification (¶ 0044, ¶ 0058) the provider as a provider backend of the system which may be a server, computer and may execute a provider computer program ).
The claimed mobile application (software per se) applied to perform the operations of “read the machine readable code…”, “receive…a payment by tap option”, “receive…payment information”, “provide …payment information” and “receive…confirmation of payment”, which according to MPEP 2106.05(d) II (see also MPEP 2106.05(g)) the courts have recognized the following computer functions are claimed in a merely generic manner (e.g., at a high level of generality) where technology is merely applied to perform the abstract idea or as insignificant extra-solution activity.
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014)
Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
The claim limitations (receiving, providing, reading) are recited at a high level of generality without details of technical implementation and thus are insignificant extra solution activity.
The additional element “mobile application” (software per se) is additionally applied to perform the operation “access the URL” which is directed toward using technology to access a web resource locator. This limitation is recited at a high-level of generality such that it amounts to no more than mere instructions to perform a step in a transaction process.
The claim limitations when considered individually fail to provide any indications of patent eligible subject matter, according to MPEP guidance (see MPEP 2106.05 (a)-(c), (e )-(h).
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological environment.
When the claims are taken as an ordered combination or as a whole, the combination of limitations, the combination of limitations 1-3 are directed toward receiving a generated readable code comprising an embedded link to a provider website at a provider url and accessing the URL -which as a combination is directed toward a transaction related process and not any indications of patent eligibility under step 2A prong 2 lacking technical description of the generating, reading or accessing. The combination is not directed toward readable code generation but rather a transaction related process. The combination of limitations 1-3 and 4-5 is directed toward receiving payment information upon accessing the provider URL of limitations 1-3, which is not directed toward any technology or technical improvement or a problem in technology but rather to receive payment formation for a transaction. The combination of limitations 1-5 and 6-8 is directed toward providing the payment information to the provider of limitations 1-5 and executing and receiving a confirmation of payment – which is not directed toward any technology or technical improvement or a problem in technology but rather the confirmation of a payment of a transaction. Therefore, when considered as a whole or ordered combination the combination of limitations 1-8 is directed toward a payment process.
The wherein clause “wherein the mobile application is configured to receive payment information from a physical financial instrument wirelessly”, further limits the mobile application operation to perform the function “receive payment information” without technical details. The wherein clause is high level with a generic function with an expected result.
The wherein clause “wherein the machine- readable code is provided by an electronic device for the provider” does not further limit the provider functional capability instead merely limits the source of the code provided.
The combinations of parts is not directed toward any of the indications of patent eligible subject matter under step 2A prong 2, but instead a deposit transaction activity and risk mitigation to prevent fraud. MPEP guidance (see MPEP 2106.05 (a)-(c), (e )-(h)
The claim limitations as a whole, as an ordered combination and the combination of steps not integrate the judicial exception into a practical application as the claim process fails to impose meaningful limits upon the abstract idea. This is because the claimed subject matter recites applying software per se used to perform a transaction failing to provide additional elements or combination or elements that go beyond applying technology as a tool to perform the identified abstract idea. The functions recited by the mobile application (software per se) in the claims recite the concept of a financial activity. The claim limitations and specification lacks technical disclosure on what the technical problem was and how the claimed limitations provide a technical solution to a technical problem rather than a solution to a problem found in the abstract idea. Taking the claim elements separately, or as a combination, the operation performed by the mobile application (software per se) at each step of the process is purely in terms of results desired and devoid of implementation of details. Technology is not integral to the process as the claimed subject matter is so high level that any generic programming could be applied and the functions could be performed by any known means.
Furthermore, the claimed limitations do not provide an operation that could be considered as sufficient to provide a technological implementation or application of/or improvement to this concept (i.e. integrated into a practical application).
The integration of elements do not improve upon technology or improve upon computer functionality or capability in how computers carry out one of their basic functions. The integration of elements do not provide a process that allows computers/technology to perform functions that previously could not be performed. The integration of elements do not provide a process which applies a relationship to apply a new way of using an application. The limitations do not recite a specific use machine or the transformation of an article to a different state or thing. The limitations do not provide other meaningful limits beyond generally linking the use of the abstract idea to a particular technological environment. The resource claimed performing the steps is merely a “field of use” application of technology. The instant application, therefore, still appears only to implement the abstract idea to the particular technological environments apply what generic computer functionality in the related arts. The steps are still a combination made to perform a financial activity and does not provide any of the determined indications of patent eligibility set forth in the 2019 USPTO 101 guidance. The additional steps only add to those abstract ideas using generic functions, and the claims do not show improved ways of, for example, an particular technical function for performing the abstract idea that imposes meaningful limits upon the abstract idea.
Moreover, Examiner was not able to identify any specific technological processes that goes beyond merely confining the abstract idea in a particular technological environment, which, when considered in the ordered combination with the other steps, could have transformed the nature of the abstract idea previously identified. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim provides no technical details regarding how the operations performed by the “mobile application”. Instead, similar to the claims at issue in Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332 (Fed. Cir. 2017), “the claim language . . . provides only a result-oriented solution with insufficient detail for how a computer accomplishes it. Our law demands more.” Intellectual Ventures, 850 F.3d at 1342 (citing Elec. Power Grp. LLC v. Alstom, S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016)). The claim is directed to an abstract idea
STEP 2B; The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to concepts of the abstract idea into a practical application. The additional elements recited in the claim beyond the abstract idea include system comprising a mobile device executing a mobile application, device hosting a provider website for a provider and a provider (see claim interpretation above).
The claimed provider is configured to perform the operations “generate machine readable code” and “execute payment” which is equivalent to being applied to perform the claimed operations in a transaction process.
The claimed mobile application (software per se) applied to perform the operations of “reading a machines readable code”, “assessing …the URL”, “receiving…a payment by tap option”, “receiving…payment information”, “providing …payment information…” and “receiving …confirmation of payment” when taken separately, except for the “accessing” step in the method, the steps “reading”, “receiving” and “providing” steps are well understood insignificant extra solution activity. The claimed provider using computer technology to access a website using URL and tap options for receiving data ----are some of the most basic functions of a computer technology.
In reference to Alice, limitations which are considered well understood and are merely applying technology to implement the abstract idea, are not enough to qualify as “significantly more” with an abstract idea. The claimed limitations amount to no more than mere instructions to implement the abstract idea on a computer or requiring no more than a generic compute to perform generic computer functions that are well understood activities known to the industry. As a result, none of the hardware recited by the system claims offers a meaningful limitation beyond generally linking the use of the method to a particular technological environment, that is, implementation via computers.... The claim limitations do not recite that any of the “devices” perform more than a high level generic function .... None of the limitations recite technological implementation details for any of these steps, but instead recite only results desired to be achieved by any and all possible means.... Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
When the claims are taken as a whole, as an ordered combination, the combination of steps does not add “significantly more” by virtue of considering the steps as a whole, as an ordered combination. The ordered combination of limitations recited well understood routine technical process for providing and receiving data in a transaction process. The “accessing” step in combination with the receiving of data from providers and providing payment information does not provide any specific or technical process which would qualify as significantly more. All of these computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) "Absent a possible narrower construction of the terms “reading”, “accessing”, “receiving”, “providing” ... are functions can be achieved by any general purpose computer without special programming". None of these activities are used in some unconventional manner nor do any produce some unexpected result. In short, each step whether considered individually or as a combination does no more than require a generic computer to perform generic computer functions to perform the abstract idea.
As to the data operated upon, "even if a process of collecting and analyzing information is 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than abstract." SAP America, Inc. v. Invest Pic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Applicant’s claimed functions add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis modification-transmission is equally generic and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited as an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). The ordering of the steps is therefore ordinary and conventional. The analysis concludes that the claims do not provide an inventive concept because the additional elements recited in the claims do not provide significantly more than the recited judicial exception.
According to 2106.05 well-understood and routine processes to perform the abstract idea is not sufficient to transform the claim into patent eligibility. As evidence the examiner provides:
MPEP 2106.05(g)) the courts have recognized the following computer functions are claimed in a merely generic manner (e.g., at a high level of generality) where technology is merely applied to perform the abstract idea or as insignificant extra-solution activity.
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014)
Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
The specification discloses: FIG. 3
[0044] System 100 may include provider backend 150, which may be a server ( e.g., physical and/or cloud-based), a computer ( e.g., workstation, desktop, laptop, notebook, tablet, etc.), IoT appliance, etc. Provider backend
150 may execute provider computer program 155, which may provide a payment interface to application 112 or browser 114 via network 140.
[0011] According to another embodiment, a system may include: a mobile electronic device executing a mobile application; and an electronic device hosting a provider website for a provider at a uniform resource locator
(URL). The provider may be configured to generate a machine-readable code for a transaction involving a good or service provided by the provider, the machine-readable code comprising an embedded link to the URL… the
provider may be configured to execute payment for the transaction using the payment information…
[0038] System 100 may include customer electronic device 110, such as a computer, a smart phone, a smart watch, an Internet of Things (IoT) appliance, etc. In one embodiment, customer electronic device 110 may be a mobile
electronic device.
[0060] Figure 3 depicts an exemplary computing system for implementing aspects of the present disclosure. Figure 3 depicts exemplary computing device 300. Computing device 300 may represent the system components described
herein. Computing device 300 may include processor 305 that may be coupled to memory 310. Memory 310 may include volatile memory. Processor 305 may execute computer-executable program code stored in memory 310, such as software programs 315. Software programs 315 may include one or more of the logical steps disclosed herein as a programmatic instruction, which may be executed by processor 305. Memory 310 may also include data repository 320, which may be nonvolatile memory for data persistence. Processor 305 and memory 310 may be coupled by bus 330. Bus 330 may also be coupled to one or more network interface connectors 340, such as wired network interface 342 or wireless network interface 344. Computing device 300 may also have user
interface components, such as a screen for displaying graphical user interfaces and receiving input from the user, a mouse, a keyboard and/or other input/output components (not shown).
[0062] Embodiments of the system or portions of the system may be in the form of a "processing machine," such as a general-purpose computer, for example. As used herein, the term "processing machine" is to be understood to
include at least one processor that uses at least one memory. The at least one memory stores a set of instructions. The instructions may be either permanently or temporarily stored in the memory or memories of the processing machine. The processor executes the instructions that are stored in the memory or memories in order to process data. The set of instructions may include various instructions that perform a particular task or tasks, such as those tasks described above. Such a set of instructions for performing a particular task may be characterized as a program, software program, or simply software.
[0063] In one embodiment, the processing machine may be a specialized processor.
[0064] In one embodiment, the processing machine may be a cloud-based processing machine, a physical processing machine, or combinations thereof.
[0065] As noted above, the processing machine executes the instructions that are stored in the memory or memories to process data. This processing of data may be in response to commands by a user or users of the processing
machine, in response to previous processing, in response to a request by another processing machine and/or any other input, for example.
[0066] As noted above, the processing machine used to implement embodiments may be a general-purpose computer. However, the processing machine described above may also utilize any of a wide variety of other
technologies including a special purpose computer, a computer system including, for example, a microcomputer, mini-computer or mainframe, a programmed microprocessor, a micro-controller, a peripheral integrated circuit
element, a CSIC (Customer Specific Integrated Circuit) or ASIC (Application Specific Integrated Circuit) or other integrated circuit, a logic circuit, a digital signal processor, a programmable logic device such as a FPGA (Field Programmable Gate Array), PLD (Programmable Logic Device), PLA (Programmable Logic Array), or PAL (Programmable Array Logic), or any other device or arrangement of devices that is capable of implementing the
steps of the processes disclosed herein.
[0067] The processing machine used to implement embodiments may utilize a suitable operating system.
The instant application, therefore, still appears to only implement the abstract ideas to the particular technological environments using what is generic components and functions in the related arts. The claim is not patent eligible.
The remaining dependent claims—which impose additional limitations—also fail to claim patent-eligible subject matter because the limitations cannot be considered statutory. In reference to claims 9-14 these dependent claim have also been reviewed with the same analysis as independent claim 8. Dependent claim 9 is directed toward limiting the readable code comprising a QR code-well understood in the art of transaction. Dependent claim 10 is directed toward readable code provided on an invoice- directed toward a transaction process without any technical details. Dependent claim 11 is directed toward readable code dynamic and specific to transaction- the specification discloses para 0051 “the machine-readable code may be dynamic
and specific to the transaction involving the good or service; in another
embodiment, the machine-readable code may be static and may be associated
with the location where the good or service is provided or received (e.g., a table
at a restaurant, a vehicle, etc.).”, and therefore, directed toward conditions of the transaction process. Dependent claim 12 is directed toward the readable code static and associated with a location- - the specification discloses para 0051 “the machine-readable code may be dynamic and specific to the transaction involving the good or service; in another embodiment, the machine-readable code may be static and may be associated with the location where the good or service is provided or received (e.g., a table at a restaurant, a vehicle, etc.).”, and therefore, directed toward the conditions of a transaction process. Dependent claim 13 is directed toward reading payment information using near field communications-well understood in the art. Dependent claim 14 is directed toward readable code comprises an identifier and connects to provider network- directed toward with respect to the identifier a transaction process and with respect to connects to provider network, claim 1 discloses readable code comprising an embedded URL link, connecting to provider networks via URL is well understood in the art.
The dependent claim(s) have been examined individually and in combination with the preceding claims, however they do not cure the deficiencies of claim 8. Where all claims are directed to the same abstract idea, “addressing each claim of the asserted patents [is] unnecessary.” Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 7 Ass ’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014). If applicant believes the dependent claims 9-14 are directed towards patent eligible subject matter, they are invited to point out the specific limitations in the claim that are directed towards patent eligible subject matter.
In reference to Claim(s) 15-20:
STEP 1. Per Step 1 of the two-step analysis, the claims are determined to include a non-transitory computer readable medium, as in independent Claim 15 and the dependent claims. Such mediums fall under the statutory category of "manufacture." Therefore, the claims are directed to a statutory eligibility category.
STEP 2A Prong 1. The executed instructions of claim 15 corresponds to steps of metho claim 1. Therefore, claim 15 has been analyzed and rejected as being directed toward an abstract idea of the categories of concepts directed toward mental processes and market activity previously discussed with respect to claim 1.
STEP 2A Prong 2: The executed instructions of claim 15 corresponds to steps of metho claim 1. The additional elements beyond the abstract idea include non-transitory computer readable storage medium, including instructions stored thereon, which when read and executed by one or more computer processors, cause the one or more computer processors to perform steps corresponding to claim 1. Therefore, claim 15 has been analyzed and rejected as failing to provide limitations that are indicative of integration into a practical application, as previously discussed with respect to claim 1.
STEP 2B; The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to concepts of the abstract idea into a practical application. The additional elements beyond the abstract idea include The additional elements beyond the abstract idea include non-transitory computer readable storage medium, including instructions stored thereon, which when read and executed by one or more computer processors, cause the one or more computer processors to perform corresponding steps of claim 1
With respect to the claimed manufacture, nearly every computer instructions executed for implementing a method will include a “processor” capable of performing the basic computer functions -of “reading”, “accessing”, “receiving” and “providing”. As a result, none of the hardware recited by the manufacture claims offers a meaningful limitation beyond generally linking the use of the method to a particular technological environment, that is, implementation via computers. The claim is not "truly drawn to a specific" computer readable medium, but rather is directed toward the method of performing and confirming a payment for a transaction. Simply reciting the use of a computer to execute an algorithm to perform a transaction will not change the analysis. Accordingly, the claim is determined not to meet the Alice/May 2A and 2B test. Furthermore, the "incidental use" of a computer did not allow the claim to meet the Alice 2A or 2B requirements.
With respect to the combination of executed instructions manufacture claim 15 corresponds to steps of method claim 1. Therefore, claim 15 has been analyzed and rejected as failing to provide additional elements that amount to an inventive concept –i.e. significantly more than the recited judicial exception. Furthermore, as previously discussed with respect to claim 1, the limitations when considered individually, as a combination of parts or as a whole fail to provide any indication that the elements recited are unconventional or otherwise more than what is well understood, conventional, routine activity in the field.
According to 2106.05 well-understood and routine processes to perform the abstract idea is not sufficient to transform the claim into patent eligibility. As evidence the examiner provides:
MPEP 2106.05(g)) the courts have recognized the following computer functions are claimed in a merely generic manner (e.g., at a high level of generality) where technology is merely applied to perform the abstract idea or as insignificant extra-solution activity.
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014)
Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
The specification discloses:
[0075] As described above, the embodiments may illustratively be embodied in the form of a processing machine, including a computer or computer system, for example, that includes at least one memory. It is to be appreciated that the set of instructions, i.e., the software for example, that enables the computer operating system to perform the operations described above may be contained on any of a wide variety of media or medium, as desired. Further, the data that is processed by the set of instructions might also be contained on any of a wide variety of media or medium. That is, the particular medium, i.e., the memory in the processing machine, utilized to hold the set of instructions and/or the data used in embodiments may take on any of a variety of physical forms or transmissions, for example. Illustratively, the medium may be in the form of a compact disc, a DVD, an integrated circuit, a hard disk, a floppy disk, an optical disc, a magnetic tape, a RAM, a ROM, a PROM, an EPROM, a wire, a cable, a fiber, a communications channel, a satellite transmission, a memory card, a SIM card, or other remote transmission,
as well as any other medium or source of data that may be read by the processors.
The instant application, therefore, still appears to only implement the abstract ideas to the particular technological environments using what is generic components and functions in the related arts. The claim is not patent eligible.
The remaining dependent claims—which impose additional limitations—also fail to claim patent-eligible subject matter because the limitations cannot be considered statutory. In reference to claims 16-20 these dependent claim have also been reviewed with the same analysis as independent claim 15. Dependent claim 16 is directed toward limiting the readable code comprising a QR code-well understood in the art of transaction. Dependent claim 17 is directed toward readable code dynamic and specific to transaction- the specification discloses para 0051 “the machine-readable code may be dynamic and specific to the transaction involving the good or service; in another
embodiment, the machine-readable code may be static and may be associated
with the location where the good or service is provided or received (e.g., a table
at a restaurant, a vehicle, etc.).”, and therefore, directed toward conditions of the transaction process. Dependent claim 18 is directed toward the readable code static and associated with a location- - the specification discloses para 0051 “the machine-readable code may be dynamic and specific to the transaction involving the good or service; in another embodiment, the machine-readable code may be static and may be associated with the location where the good or service is provided or received (e.g., a table at a restaurant, a vehicle, etc.).”, and therefore, directed toward the conditions of a transaction process. Dependent claim 19 is directed toward reading payment information using near field communications-well understood in the art. Dependent claim 20 is directed toward readable code comprises an identifier and connects to provider network- directed toward with respect to the identifier a transaction process and with respect to connects to provider network, claim 1 discloses readable code comprising an embedded URL link, connecting to provider networks via URL is well understood in the art.
The dependent claim(s) have been examined individually and in combination with the preceding claims, however they do not cure the deficiencies of claim 16. Where all claims are directed to the same abstract idea, “addressing each claim of the asserted patents [is] unnecessary.” Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 7 Ass ’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014). If applicant believes the dependent claims 17-20 are directed towards patent eligible subject matter, they are invited to point out the specific limitations in the claim that are directed towards patent eligible subject matter.
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) 1-2, 4, 6-9, 11, 13-17 and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2014/081822 A3 by Campos et al. (Campos) and further in view of WO 2013/166507 A1 by Pasa et al. (Pasa)
In reference to Claim 1:
Campos teaches:
(Currently Amended) A method ((Campos) in at least Abstract), comprising:
reading, by a mobile application executed by a mobile customer electronic device, a machine-readable code comprising an embedded link to a provider website at a uniform resource locator (URL) provided by a provider of a good or service for a transaction involving the good or service ((Campos) in at least para 0026 wherein the prior art teaches scanning code of physical stored value card to request eSVC, para 0041 wherein the prior art teaches code may comprise URl code, para 0061), wherein the machine-readable code is provided by an electronic device for the provider ((Campos) in at least para 0027 wherein the prior art teaches the eSVC processor receiving QR code scan from user to create shopping cart);
accessing, by the mobile application, the URL ((Campos) in at least para 0019, para 0025, para 0041, para 0061);
receiving, by the mobile application and from the provider website, a payment … option, wherein the mobile application is configured to receive payment information from a physical instrument wirelessly ((Campos) in at least para 0020, para 0028, para 0031, para 0054);
wirelessly receiving, by the mobile application, payment information from the physical financial instrument ((Campos) in at least para 0020, para 0028, para 0031, para 0054, para 0076, para 0086);
providing, by the mobile application, the payment information that was received wirelessly from the mobile application to the provider website ((Campos) in at least para 0020, para 0028, para 0031, para 0054, para 0076, para 0086) ; and
receiving, by the mobile application and from the provider website, confirmation of payment for the transaction. ((Campos) in at least para 0056, para 0087)
Campos does not explicitly teach:
a payment by tap option
Pasa teaches:
a payment by tap option…((Pasa) in at least para 0005, para 0110)
Both Campos and Pasa teach that information can be transmitted using NFC wireless communication means. Pasa teaches the motivation of applying “tap to pay” for NFC tap proximity communication when the user device is close to an NFC enable POS terminal so that payment details can be transmitted. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the NFC communication means of Campos to include applying NFP tap communication means as taught by Pasa since Pasa teaches the motivation of applying “tap to pay” for NFC tap proximity communication when the user device is close to an NFC enable POS terminal so that payment details can be transmitted.
In reference to Claim 2:
The combination of Campos and Pasa discloses the limitations of independent claim 1. Campos further discloses the limitations of dependent claim 2
(Original) The method of claim 1 (see rejection of claim 1 above),
wherein the machine-readable code comprises a quick response code. ((Campos) in at least Abstract; para 0007, para 0019, para 0236 )
Although the prior art does not use the term quick response code, the prior art teaches a machine readable code comprising a QR code, barcode or matrix code. A QR code is short for quick response code. As evidence see NPL article QR code definition by Technical terms
In reference to Claim 4:
The combination of Campos and Pasa discloses the limitations of independent claim 1. Campos further discloses the limitations of dependent claim 4
(Currently Amended) The method of claim 1 (see rejection of claim 1 above),
wherein the machine-readable code is unique to the transaction. ((Campos) in at least para 0024-0025),
In reference to Claim 6:
The combination of Campos and Pasa discloses the limitations of independent claim 1. Campos further discloses the limitations of dependent claim 6
(Currently Amended) The method of claim 1 (see rejection of claim 1 above),
wherein the mobile application wirelessly receives the payment information by near field communication. ((Campos) in at least para 0019, para 0109)
In reference to Claim 7:
The combination of Campos and Pasa discloses the limitations of independent claim 1. Campos further discloses the limitations of dependent claim 7
(Currently Amended) The method of claim 1 (see rejection of claim 1 above),
wherein the machine-readable code further comprises an identifier for a provider network ((Campos) in at least para 0019, para 0041); and
in response to reading the machine-readable code, the customer mobile electronic device connects to the provider network ((Campos) in at least para 0041, para 0061).
In reference to Claim 8:
Campos teaches:
(Currently amended) A system ((Campos) in at least Abstract), comprising:
a customer mobile electronic device executing a mobile application, wherein the mobile application is configured to receive payment information from a physical financial instrument wirelessly ) in at least para 0026 wherein the prior art teaches scanning code of physical stored value card to request eSVC, para 0031, para 0035-0036, para 0041 wherein the prior art teaches code may comprise URl code, para 0054, para 0056, para 0061, para 0067, para 0072, para 0083); and
an electronic device hosting a provider website for a provider at a uniform resource locator (URL) ((Campos) in at least para 0041, para 0061);
wherein: the provider is configured to generate a machine-readable code for a transaction involving a good or service provided by the provider, the machine- readable code comprising an embedded link to the URL, wherein the machine- readable code is provided by an electronic device for the provider ((Campos) in at least para 0026-0027 wherein the prior art teaches the eSVC processor receiving QR code scan from user to create shopping cart; para 0041, para 0061);
the mobile application is configured to read the machine-readable code ((Campos) in at least para 0026);
the mobile application is configured to access the URL ((Campos) in at least para 0041, para 0061);
the mobile application is configured to receive, from the provider website, a payment ... ((Campos) in at least para 0020, para 0028, para 0031, para 0054);
the mobile application is configured to wirelessly receive payment information from the physical financial instrument ((Campos) in at least para 0026 wherein the prior art teaches scanning code of physical stored value card to request eSVC);
the mobile application is configured to provide the payment information that was received wirelessly from the mobile application to the provider website ((Campos) in at least para 0020, para 0028, para 0031, para 0054);
the provider is configured to execute payment for the transaction using the payment information ((Campos) in at least para 0020, para 0028, para 0031, para 0054, para 0076, para 0086); and
the mobile application is configured to receive, from the provider website, confirmation of payment for the transaction ((Campos) in at least para 0056, para 0087).
Campos does not explicitly teach:
the mobile application is configured to receive, from the provider website, a payment by tap option
Pasa teaches:
the mobile application is configured to receive, from the provider website, a payment by tap option ((Pasa) in at least para 0005, para 0110)
Both Campos and Pasa teach that information can be transmitted using NFC wireless communication means. Pasa teaches the motivation of applying “tap to pay” for NFC tap proximity communication when the user device is close to an NFC enable POS terminal so that payment details can be transmitted. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the NFC communication means of Campos to include applying NFP tap communication means as taught by Pasa since Pasa teaches the motivation of applying “tap to pay” for NFC tap proximity communication when the user device is close to an NFC enable POS terminal so that payment details can be transmitted.
In reference to Claim 9:
The combination of Campos and Pasa discloses the limitations of independent claim 8. Campos further discloses the limitations of dependent claim 9:
The operations of System claim 9 corresponds to the steps of method claim 2. Therefore, claim 9 has been analyzed and rejected as previously discussed with respect to claim 2
In reference to Claim 11:
The combination of Campos and Pasa discloses the limitations of independent claim 8. Campos further discloses the limitations of dependent claim 11.
The operations of System claim 11 corresponds to the steps of method claim 4. Therefore, claim 11 has been analyzed and rejected as previously discussed with respect to claim 4
In reference to Claim 13:
The combination of Campos and Pasa discloses the limitations of independent claim 8. Campos further discloses the limitations of dependent claim 13.
The operations of System claim 13 corresponds to the steps of method claim 6. Therefore, claim 13 has been analyzed and rejected as previously discussed with respect to claim 6
In reference to Claim 14:
The combination of Campos and Pasa discloses the limitations of independent claim 8. Campos further discloses the limitations of dependent claim 14
The operations of System claim 14 corresponds to the steps of method claim 7. Therefore, claim 14 has been analyzed and rejected as previously discussed with respect to claim 7
In reference to claim 15:
Campos teaches:
(Currently amended) A non-transitory computer readable storage medium, including instructions stored thereon, which when read and executed by one or more computer processors ((Campos) in at least para 0264), cause the one or more computer processors to perform steps comprising:
reading a machine-readable code comprising an embedded link to a provider website at a uniform resource locator (URL) provided by a provider of a good or service for a transaction involving the good or service ((Campos) in at least para 0026 wherein the prior art teaches scanning code of physical stored value card to request eSVC, para 0041 wherein the prior art teaches code may comprise URl code, para 0061), wherein the machine- readable code is provided by an electronic device for the provider ((Campos) in at least para 0027 wherein the prior art teaches the eSVC processor receiving QR code scan from user to create shopping cart);;
accessing the URL ((Campos) in at least para 0019, para 0025, para 0041, para 0061);
receiving, from the provider website, a payment … ((Campos) in at least para 0020, para 0028, para 0031, para 0054);
wirelessly receiving payment information from a physical financial instrument ((Campos) in at least para 0020, para 0028, para 0031, para 0054, para 0076, para 0086);
providing the payment information that was received wirelessly to the provider website ((Campos) in at least para 0020, para 0028, para 0031, para 0054, para 0076, para 0086); and
receiving, from the provider website, confirmation of payment for the transaction ((Campos) in at least para 0056, para 0087)
Campos does not explicitly teach:
…a payment by tap option
Pasa teaches:
receiving, from the provider website, a payment by tap option ((Pasa) in at least para 0005, para 0110)
Both Campos and Pasa teach that information can be transmitted using NFC wireless communication means. Pasa teaches the motivation of applying “tap to pay” for NFC tap proximity communication when the user device is close to an NFC enable POS terminal so that payment details can be transmitted. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the NFC communication means of Campos to include applying NFP tap communication means as taught by Pasa since Pasa teaches the motivation of applying “tap to pay” for NFC tap proximity communication when the user device is close to an NFC enable POS terminal so that payment details can be transmitted.
In reference to Claim 16:
The combination of Campos and Pasa discloses the limitations of independent claim 15. Campos further discloses the limitations of dependent claim 16
The executed instructions of medium claim 16 corresponds to the steps of method claim 2. Therefore, claim 16 has been analyzed and rejected as previously discussed with respect to claim 2
In reference to Claim 17:
The combination of Campos and Pasa discloses the limitations of independent claim 15. Campos further discloses the limitations of dependent claim 17:
The executed instructions of medium claim 17 corresponds to the steps of method claim 4. Therefore, claim 17 has been analyzed and rejected as previously discussed with respect to claim 4
In reference to Claim 19:
The combination of Campos and Pasa discloses the limitations of independent claim 15. Campos further discloses the limitations of dependent claim 19:
The executed instructions of medium claim 19 corresponds to the steps of method claim 6. Therefore, claim 19 has been analyzed and rejected as previously discussed with respect to claim 6
In reference to Claim 20:
The combination of Campos and Pasa discloses the limitations of independent claim 15. Campos further discloses the limitations of dependent claim 20:
The executed instructions of medium claim 20 corresponds to the steps of method claim 7. Therefore, claim 20 has been analyzed and rejected as previously discussed with respect to claim 7
Claim(s) 3 of claim 1 above; Claim(s) 10 of claim 8 above is/are rejected under 35 U.S.C. 103 as being unpatentable WO 2014/081822 A3 by Campos et al. (Campos) in view of WO 2013/166507 A1 by Pasa et al. (Pasa) and further in view of US Patent No. 12,190,345 B1 by Shah et al. (Shah)
In reference to Claim 3:
The combination of Campos and Pasa discloses the limitations of independent claim 1. Campos further discloses the limitations of dependent claim 3
(Original) The method of claim 1 (see rejection of claim 1 above),
Campos does not explicitly teach:
wherein the machine-readable code is provided on a paper invoice.
Shah teaches:
wherein the machine-readable code is provided on a paper invoice. ((Shah) in at least Col 4 lines 53-Col 5 lines 1-11, Col 12 lines 1-10)
Both Campos and Shah teach scanning QR codes in a transaction process. Shah teaches the motivation of a user device scanning QR codes that may be printed on a receipt in order to acquire data regarding the transaction which includes merchant identifier, item details of the transaction, and to identify offers related to the transaction. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the scanning QR code process of Campos to include scanning receipts as taught by Shah for QR codes since Shah teaches the motivation of a user device scanning QR codes that may be printed on a receipt in order to acquire data regarding the transaction which includes merchant identifier, item details of the transaction, and to identify offers related to the transaction.
In reference to Claim 10:
The combination of Campos and Pasa discloses the limitations of independent claim 8. Campos further discloses the limitations of dependent claim 10
The operations of System claim 10 corresponds to the steps of method claim 3. Therefore, claim 10 has been analyzed and rejected as previously discussed with respect to claim 3
Claim(s) 5 of claim 1 above; Claim(s) 12 of claim 8; Claim 18 of claim 15 above is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2014/081822 A3 by Campos et al. (Campos) in view of WO 2013/166507 A1 by Pasa et al. (Pasa) and further in view of WO 2021/130775 A1 by Duggal et al. (Duggal)
In reference to Claim 5:
Campos teaches:
(Currently Amended) The method of claim 1 (see rejection of claim 1 above),
wherein the machine-readable code is … with a location.((Campos) in at least para 0025)
Campos does not explicitly teach:
wherein the machine-readable code is reusable with a location
Duggal teaches:
wherein the machine-readable code is reusable with a location ((Duggal) in at least Abstract, page 4 lines 6-10, page 7 lines 20-page 8)
Both Campos and Duggal are directed toward generating unique QR codes for transaction events. Duggal teaches the motivation that currently industries are providing services such as QR code scanning payment modes, but that limited use QR codes that include static information/details to the user every time the user scans the QR code and that there is a need of reusable unique codes having capability on every scan of the unique code based on user requirements adding convenience increasing the reach and scale for applications working on unique code base platforms. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the scanning QR code process of Campos to include reusable codes as taught by Duggal since Duggal teaches the motivation that currently industries are providing services such as QR code scanning payment modes, but that limited use QR codes that include static information/details to the user every time the user scans the QR code and that there is a need of reusable unique codes having capability on every scan of the unique code based on user requirements adding convenience increasing the reach and scale for applications working on unique code base platforms.
In reference to Claim 12:
The combination of Campos and Pasa discloses the limitations of independent claim 8. Campos further discloses the limitations of dependent claim 12
The operations of System claim 12 corresponds to the steps of method claim 5. Therefore, claim 12 has been analyzed and rejected as previously discussed with respect to claim 5
In reference to Claim 18:
The combination of Campos and Pasa discloses the limitations of independent claim 15. Campos further discloses the limitations of dependent claim 18
The executed instructions of medium claim 18 corresponds to the steps of method claim 5. Therefore, claim 18 has been analyzed and rejected as previously discussed with respect to claim 5
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pub No. 2018/0033002 A1 by Weiss et al; US Patent No. 9,087,329 B2 by Lingham
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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/MARY M GREGG/Examiner, Art Unit 3695
/CHRISTINE M Tran/Supervisory Patent Examiner, Art Unit 3695
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