DETAILED ACTION
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 - 6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
ALICE/ MAYO: TWO-PART ANALYSIS
2A. First, a determination whether the claim is directed to a judicial exception (i.e., abstract idea).
Prong 1: A determination whether the claim recites a judicial exception (i.e., abstract idea).
Groupings of abstract ideas enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Mathematical concepts- mathematical relationships, mathematical formulas or equations, mathematical calculations.
Certain methods of organizing human activity- fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
Mental processes- concepts performed in the human mind (including an observation, evaluation, judgement, opinion).
Prong 2: A determination whether the judicial exception (i.e., abstract idea) is integrated into a practical application.
Considerations indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception
Considerations that are not indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
2B. Second, a determination whether the claim provides an inventive concept (i.e., Whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
Considerations indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception NOTE: The only consideration that does not overlap with the considerations indicative of integration into a practical application associated with step 2A: Prong 2.
Considerations that are not indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. NOTE: The only consideration that does not overlap with the considerations that are not indicative of integration into a practical application associated with step 2A: Prong 2.
See also, 2010 Revised Patent Subject Matter Eligibility Guidance; Federal Register; Vol. 84, No. 4; Monday, January 7, 2019
Claims 1 - 6 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
1: Statutory Category
Applicant’s claimed invention, as described in independent claim 1, is/are directed to a process (i.e. a method).
2(A): The claim(s) are directed to a judicial exception (i.e., an abstract idea).
PRONG 1: The claim(s) recite a judicial exception (i.e., an abstract idea).
Certain Method of Organizing Human Activity
The claim as a whole recites a method of organizing human activity. The claimed invention is involves receiving a request to consolidate one or more virtual payment cards of a plurality of virtual payment cards; enabling a user of the user device to select, from the plurality of virtual payment cards, the one or more virtual payment cards to be consolidated with a desired virtual payment card; enabling the user to select the desired virtual payment card from a further plurality of virtual payment cards; transferring amounts of funds from the one or more virtual payment cards to the desired virtual payment card; and upon completion of the transferring, closing the one or more virtual payment cards, which is a fundamental economic principles or practices (processing virtual payment cards (e.g., consolidating one or more virtual payment card(s) with a desired virtual payment card; transferring amounts of funds from the one or more virtual payment card(s) to the desired virtual payment card; closing the one or more virtual payment card(s)); commercial or legal interactions (processing virtual payment cards (e.g., consolidating one or more virtual payment card(s) with a desired virtual payment card; transferring amounts of funds from the one or more virtual payment card(s) to the desired virtual payment card; closing the one or more virtual payment card(s)); and managing personal behavior or relationships or interactions between people (receiving; enabling ….. to select; transferring; closing, etc.).
The mere nominal recitation of “a processor of a centralized processing platform” (preamble only) does not take the claim out of the method of organizing human activity grouping. Thus, the claim recites an abstract idea.
Mental Processes
The claim recites limitations directed to receiving a request to consolidate one or more virtual payment cards of a plurality of virtual payment cards; enabling a user of the user device to select, from the plurality of virtual payment cards, the one or more virtual payment cards to be consolidated with a desired virtual payment card; enabling the user to select the desired virtual payment card from a further plurality of virtual payment cards; transferring amounts of funds from the one or more virtual payment cards to the desired virtual payment card; and upon completion of the transferring, closing the one or more virtual payment cards.
The limitation(s), as drafted, is/are a process that, under it’s broadest reasonable interpretation, covers performance of the limitation(s) in the mind. Although the claim refers to a “processor of a centralized processing platform” (preamble only), nothing in the claim precludes the steps from practically being performed in the mind. For example, the claim encompasses the user manually receiving a request to consolidate one or more virtual payment cards of a plurality of virtual payment cards; enabling a user of the user device to select, from the plurality of virtual payment cards, the one or more virtual payment cards to be consolidated with a desired virtual payment card; enabling the user to select the desired virtual payment card from a further plurality of virtual payment cards; transferring amounts of funds from the one or more virtual payment cards to the desired virtual payment card; and upon completion of the transferring, closing the one or more virtual payment cards.
The mere nominal recitation of “a processor of a centralized processing platform” (preamble only) does not take the claim out of the method of organizing human activity grouping. Thus, the claim recites an abstract idea.
PRONG 2: The judicial exception (i.e., an abstract idea). Is not integrated into a practical application.
The claim recites the combination of additional elements of “the method being executed by a processor of a centralized processing platform” (preamble only). The claim also recites the combination of additional elements of the “receiving” step being “from an application running on a user device in communication with the centralized processing platform”. The claim also recites the combination of additional elements of the “enabling” steps occurring “via the application”. The additional element(s) is/ are recited at a high level of generality (i.e., as a generic computer being used as a tool to perform the generic computer functions of (a) data receipt/ transmission (e.g., “receiving”, “transferring”, etc. step(s) as claimed); and (b) data processing (e.g., “enabling ….. to select”, “closing”, etc. step(s) as claimed)). The additional element(s) is/ are recited at a high level of generality (i.e., as general means of gathering virtual payment card data), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The language is no more than mere instructions to apply the exception using generic computer components. Accordingly, the additional element(s) does not integrate the abstract idea into a practical application because it does not impose any meaningful limitations on practicing the abstract idea. The claim is directed to an abstract idea. NOTE: (a) The claim is exclusively from the perspective of a “processor of a centralized processing platform”. (b) Although “an application running on a user device in communication with the centralized processing platform” is referenced in the claim, the “application running on a user device in communication with the centralized processing platform” merely interacts with the “processor of a centralized processing platform”. The “application running on a user device in communication with the centralized processing platform” itself does not perform any of the positively recited steps or acts required of the claimed invention.
Since the claim(s) recite a judicial exception and fails to integrate the judicial exception into a practical application, the claim(s) is/are “directed to” the judicial exception. Thus, the claim(s) must be reviewed under the second step of the Alice/ Mayo analysis to determine whether the abstract idea has been applied in an eligible manner.
2(B): The claims do not provide an inventive concept (i.e., The claim(s) do not include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
As discussed with respect to Step 2A Prong Two, the additional element(s) in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, the additional element(s) under STEP 2A Prong 2 have been evaluated in STEP 2B to determine if it is more than what is well-understood, routine conventional activity in the field. Applicant’s specification as filed 06/02/25 does not provide any indication that the technology is anything other than generic, off-the-shelf computer components, see at least [0065] [0066] [0080]. Furthermore, the prosecution history of the instant application provides Nelson, US Pub. No. 2010/0076833; and Edwards, US Pub. No. 2020/0342443 operating in a similar environment, suggesting performing tasks such as (a) data receipt/ transmission (e.g., “receiving”, “transferring”, etc. step(s) as claimed); and (b) data processing (e.g., “enabling ….. to select”, “closing”, etc. step(s) as claimed) are well understood, routine and conventional. See Nelson, Figs. 1, 2, 20, [0038] [0046] [0047] [0051] [0089] [0090] [0097] [0105] [0106] [0108] [0110]. See Edwards, [0025] [0049] [0072]. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed by applicant such as (a) data receipt/ transmission (e.g., “receiving”, “transferring”, etc. step(s) as claimed); and (b) data processing (e.g., “enabling ….. to select”, “closing”, etc. step(s) as claimed) are well understood, routine and conventional. Symantec, TLI, OIP Techs and buySAFE court decisions cited in MPEP § 2106.05(D) (ii) indicate that mere collection or receipt of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer.
For these reasons, there is no inventive concept in the claim, and thus the claim is ineligible.
Dependent claims 2 - 3 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims). Therefore, independent centralized processing platform claim 4 is/are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as the method claims. The component(s) (e.g., “processor”; “memory”) described in independent centralized processing platform claim 4, add nothing of substance to the underlying abstract idea. At best, the product(s) (centralized processing platform) recited in the claim(s) is merely providing an environment to implement the abstract idea.
Dependent claims 5 - 6 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 4 recite the limitation " wherein the request to consolidate is received from the user device of the secondary cardholder". There is insufficient antecedent basis for “the user device of the secondary cardholder” limitation in the claim.
NOTE: The particular language used is not required, but is intended as an aide to the applicant in overcoming one or more of the objections and/ or rejections noted in this office action. Alternative language may be proposed. Please indicate where support may be found in the specification for any amendments made.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nelson, US Pub No. 2010/0076833.
Re Claims 1 and 4: Nelson discloses a method/ centralized processing platform for consolidating virtual payment cards, comprising:
receiving, from an application running on a user device in communication with the centralized processing platform, a request to consolidate one or more virtual payment cards of a plurality of virtual payment cards (Nelson, Figs. 1, 2, 20, [0046] [0106]);
enabling, via the application, a user of the user device to select, from the plurality of virtual payment cards, the one or more virtual payment cards to be consolidated with a desired virtual payment card (Nelson, Figs. 1, 2, 20, [0038] [0047] [0051] [0097] [0105] [0108] [0110]);
enabling, via the application, the user to select the desired virtual payment card from a further plurality of virtual payment cards (Nelson, Figs. 1, 2, 20, [0038] [0089] [0090]);
transferring amounts of funds from the one or more virtual payment cards to the desired virtual payment card (Nelson, Fig. 20, [0108] [0110]); and
upon completion of the transferring, closing the one or more virtual payment cards (Nelson, Fig. 20, [0108] [0110]).
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) 2, 3, 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nelson as applied to claims 1 and 4 above, and further in view of Edwards, US Pub. No. 2020/0342443.
Re Claims 2 and 5: Nelson discloses the claimed invention supra but fails to explicitly disclose wherein: the one or more virtual payment cards from the plurality of virtual payment cards are associated with an account of a primary cardholder and issued, based on a further request of the primary cardholder, to a secondary cardholder; and
the desired virtual payment card is not associated with the account of the primary cardholder and issued to the secondary cardholder.
Edwards discloses:
wherein: the one or more virtual payment cards from the plurality of virtual payment cards are associated with an account of a primary cardholder and issued, based on a further request of the primary cardholder, to a secondary cardholder (Edwards, [0025] [0049] [0072]); and
the desired virtual payment card is not associated with the account of the primary cardholder and issued to the secondary cardholder (Edwards, [0025] [0049] [0072]).
Analogous Art It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Nelson and Edwards are in the field of the inventor’s endeavor as they relate to payment processing/ processing virtual payment cards. In this case, Nelson is reasonably pertinent to the particular problem with which the inventor was concerned of consolidating virtual payment cards.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the teachings of Nelson by adopting the teachings of Edwards to provide wherein: the one or more virtual payment cards from the plurality of virtual payment cards are associated with an account of a primary cardholder and issued, based on a further request of the primary cardholder, to a secondary cardholder; and the desired virtual payment card is not associated with the account of the primary cardholder and issued to the secondary cardholder.
One would have been motivated to increase user convenience and flexibility.
The claimed invention applies
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known techniques to improve a similar device (method, or product) in the same way; applies known techniques to a known device (method, or product) ready for improvement to yield predictable results; and
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known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. Thus, the claimed subject matter likely would have been obvious under KSR. KSR, 127 S.Ct. at 1741, 82 USPQ2d at 1396.
Re Claims 3 and 6: Nelson in view of Edwards discloses the claimed invention supra and Edwards further discloses wherein the request to consolidate is received from the user device of the secondary cardholder (Edwards, [0025] [0049] [0072]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARA C HAMILTON whose telephone number is (571)272-1186. The examiner can normally be reached Monday-Thursday, 8-5, EST.
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SARA CHANDLER HAMILTON
Primary Examiner
Art Unit 3695
/SARA C HAMILTON/Primary Examiner, Art Unit 3695
Prosecution Insights