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 .
Status of Claims
This action is in response to remarks received 08/28/2026 and claims earliest priority from US patent # 12475459 filed 01/10/2022.
Claims 1, 10 and 19 being independent have also been amended herein and claims 2-9, 11-18 and 20 are dependent as originally filed.
Claims 1-20 are currently pending and have been examined.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The analysis below follows the framework of Alice Corp. v. CLS Bank Int’l, as set out in MPEP 2106 and the 2019 Revised Patent Subject Matter Eligibility Guidance. Claim 1 is treated as representative. The analysis applies equally to independent claims 10 and 19, and each dependent claim is separately addressed below.
Under Step 1, claims 1-9 recite a system comprising one or more storage devices and one or more processors, which is a machine. Claims 10-18 recite a method, which is a process. Claims 19-20 recite a non-transitory computer-readable media storing instructions, which is an article of manufacture. All pending claims fall within a statutory category, so the analysis proceeds to Step 2A.
Setting aside the recited hardware, which is addressed under Prong Two, claim 1 recites the following limitations that set forth the abstract idea:
receive a request from a merchant to authorize an interaction with a user;
determining that the user is eligible to pay for the interaction with rewards points or is eligible to pay for the interaction using an equal payment plan;
based on that determination, presenting the user a first option to pay with the rewards points or a second option to pay using the equal payment plan, and requesting a security code from the user;
providing the security code to the user and receiving the security code and the user’s selection of an interaction path;
conducting the interaction using the selected interaction path; and
communicating an authorization for the interaction to the merchant.
Taken together, these steps describe authorizing a payment transaction. A party receives a merchant’s request to approve a customer’s purchase, checks whether the customer is able to pay by a given method, verifies the customer with a code, lets the customer pick how to pay, completes the payment, and tells the merchant the payment is approved. This is a fundamental economic practice and a commercial interaction in the form of sales activity, both of which fall within the certain methods of organizing human activity grouping of abstract ideas. Verifying a payer and authorizing payment in order to mitigate transaction risk is the same kind of economic practice found abstract in Alice, and buySAFE, Inc. v. Google, Inc. The practice has a direct brick and mortal analog. A sales clerk telephones the card issuer, the issuer confirms the customer has enough points on the account or can pay in installments, asks the customer for a code word to confirm identity, takes the customer’s choice of payment, completes the sale, and tells the clerk the sale is approved.
The determining and eligibility evaluation steps are also observations and judgments that could be performed in the human mind or with pen and paper but for the recitation of generic computer components, and so additionally fall within the mental processes grouping, MPEP 2106.04 (a)(2)(III).
Claim 1 therefore recites an abstract idea, and the analysis proceeds to Prong Two.
Under Step 2A, Prong Two, the additional elements of claim 1 beyond the abstract idea are: one or more storage devices; one or more processors in a network system executing application code instructions; a server; a merchant computing device; a user computing device; a merchant user interface window and a user interface displayed on the user computing device; first, second, and third communication channels, with the second and third channels recited as separate communication channels; the user computing device communicating directly with the server while bypassing the merchant computing device; and generating and transmitting instructions to open a pop-up window on the user computing device to receive the security code and present the first or second payment option.
Each additional element is recited at a high level of generality. The storage devices, processor, server, merchant computing device, and user computing device are generic computer components performing the generic functions of receiving, processing, storing, displaying, and transmitting data. The recited pop-up window likewise performs the generic computer function of displaying information and receiving user input, and the claim does not recite a particular technological mechanism for generating or operating the pop-up window beyond instructions to open the window on the user computing device. Using generic computers as tools to carry out the abstract idea amounts to no more than an instruction to apply the idea on a computer, which does not integrate the idea into a practical application, MPEP 2106.05(f); Alice, 573 U.S. at 223-26.
The steps of receiving the authorization request, transmitting instructions to open the pop-up window and the display the payment options, communicating the security code, and communicating the authorization involve receiving, displaying, and transmitting information in connection with carrying out the payment authorization process. Such receiving and transmitting of information constitutes data gathering and data output that does not meaningfully integrate the abstract idea into a practical application.
The recitation of three communication channels, with the second and third separate from the first, does not change the outcome. The claim does not recite how any channel is established, secured, or improved. It recites only that different pieces of transaction data travel over different generic network connections, and that the user device communicates with the server directly rather than through the merchant. Directing which party receives which communication is part of arranging the commercial interaction itself, not an improvement to networking technology. The newly recited requirement that the transmitted instructions open a pop-up window on the user computing device, with the user computing device communicating directly with the server while bypassing the merchant computing device, likewise specifies where the payment options and security code interface are presented and which computing devices communicate during the transaction. The claim does not recite a particular technological technique for generating the pop-up widow, establishing the direct server communication, or modifying the operation of the underlying network or computing devices. Rather these limitations use the recited computer and network components to present and exchange the information used to carry out the payment authorization process. At most, the recited channels generally link the abstract idea to the technological environment of networked computers, which is not enough. Nothing in the claim, read in light of the specification, reflects an improvement to the functioning of a computer or to another technology or technical field under MPEP 2106.05(a), applies the abstract idea with a particular machine under MPEP 2106.05(b), or effects a transformation of an article under MPEP 2106.05(c). Rather, the claimed computer and network components are used to implement the payment authorization process without reciting a technological improvement to those components.
Considering individually and as an ordered combination, the additional elements do not integrate the abstract idea into a practical application. Claim 1 is directed to the abstract idea, and the analysis proceeds to Step 2B.
Under Step 2B, the same additional elements, considered individually and as an ordered combination, do not amount to significantly more than the abstract idea. As explained above, the computing elements are generic and are used only as tools to perform the idea. The additional recitation of instructions that open a pop-up window, direct communication between the user computing device and server bypassing the merchant computing device, and separate communication channels does not, individually or as an ordered combination, provide an inventive concept. These limitations recite the use of computer interface and network communication functionality to present payment information, receive user input, and exchange transaction information in implementing the abstract payment authorization process.
The courts have recognized the computer functions recited here as well-understood, routine, and conventional activity when claimed generically: receiving or transmitting data over a network, and storing and retrieving information in memory. The specification describes the storage devices, processors, servers, channels, windows, and messaging at the same generic level and attributes no unconventional structure or operation to any of them. Displaying payment options in a window and delivering a code over an additional generic message channel such as a text message are conventional computer activities. The ordered combination adds nothing beyond what the elements contribute separately. There is no inventive concept, and claim 1 is not patent eligible. MPEP 2106.05(d)(II)
Claim 10 recites the method performed by the system of claim 1, including the amended limitations requiring instructions to open the pop-up window on the user computing device and direct communication between the user computing device and server bypassing the merchant computing device, and recites the same abstract idea with materially corresponding additional elements. Claim 19 recites a non-transitory computer readable medium storing instruction executed by one or more processors to perform materially corresponding functions, including the amended pop-up window. A generic storage medium and generic processors do not integrate the abstract idea into a practical application and do not supply an inventive concept. Claims 10 and 19 are rejected for the reasons given for claim 1.
Claims 2, 11 and 20 add communicating a confirmation message to the user computing device that the interaction was conducted with the interaction path. Confirming a completed sale to the customer is part of the commercial interaction itself, and transmitting the confirmation is insignificant post-solution activity, MPEP 2106.05(g).
Claims 3 and 12 add determining whether the interaction path is eligible based on an analysis of an account of the user. Reviewing a customer’s account to decide whether a payment method may be used is part of the abstract economic practice and is an evaluation that could be performed mentally. These claims add no additional elements.
Claims 4 and 13 further specify that the instructions recited in claims 1 and 10 are generated for a plug-in to open the pop-up window on the user computing device. A plug-in and a pop-up window are generic software display components recited at a high level of generality. They serve only as a tool used to present the payment operations and do no more than confine the idea to a browser environment, MPEP 2106.05(f) and (h).
Claims 5 and 14 add receiving a communication from the user computing device comprising the security code and a selection of the interaction path. Receiving the customer’s code and payment choice is data gathering needed to perform the abstract idea, MPEP 2106.05(g).
Claims 6 and 15 add that the pop-up window overlays the merchant user interface window and is displayed over a checkout page of the merchant website. Where a generic window sits on the screen is a presentation detail. It improves no technology and merely limits the field of use, MPEP 2106.05(h).
Claims 7 and 16 add that the security code is communicated via a push notification or a text message. Push notifications and text messages are conventional transmission channels, and picking a known message type to deliver data is insignificant extra-solution activity, MPEP 2106.05(g).
Claims 8 and 17 add determining, during the time period of the interaction, whether the user is eligible to pay with the rewards points or using the equal payment plan. Timing the eligibility check to the pendency of the transaction refines the abstract idea itself. A clerk who checks the account while the customer waits at the counter performs the same practice.
Claims 9 and 18 add that the interaction path is one of a plurality of interaction paths comprising an option to pay for the interaction with a payment instrument. Offering the customer more ways to pay is part of the sales activity. These claims add no additional elements.
None of the dependent claims adds an additional element, alone or in combination, that integrates the abstract idea into a practical application or amounts to significantly more. Claims 1-20 are rejected under 35 USC 101.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Mark Rose et al. (US 2020/0094133 A1 herein, Rose).
As per claim 1, Rose teaches a system for authorizing transactions using user interface windows generated based on selected interaction paths without interacting with merchant software, comprising:
one or more storage devices (Rose ¶¶ [154, 160, 164 & 167-169]); and
one or more processors in a network system communicatively coupled to the one or more storage devices, wherein the one or more processors execute application code instructions that are stored in the one or more storage devices to cause the system to (Rose ¶¶ [150, 154-155, 166-167 & 180]):
receive, at a server over a first communication channel, a request from a merchant computing device to authorize an interaction with a user, the interaction occurring on a merchant user interface window displayed on a user computing device (Rose ¶¶ [46, 84-85, 387, 404 & 419]);
based on determining that the user is eligible to pay for the interaction with rewards points or is eligible to pay for the interaction using an equal payment plan, generate instructions to display a user interface on the user computing device to receive a security code and a first option to pay for the interaction with the rewards points or a second option to pay for the interaction using the equal payment plan (Rose ¶¶ [64, 112, 118-120, 125 & 128-130]);
transmit, to the merchant computing device during a time period of the interaction and in second communication channel that is a separate channel from a communication channel being used to communicate with the merchant computing device, the instructions to open a pop-up window on the user computing device to receive the security code, the pop-up window comprising the first option to pay for the interaction with the rewards points or the second option to pay for the interaction in the equal payment plan, and wherein the user computing device communicates directly with the server bypassing the merchant computing device (Rose ¶¶ [38, 49 & 54-57] discloses a user-facing payment interface in the form of a lightbox/pop-up window for presenting payment options and completing a transaction. Rose ¶¶ [52-53] further disclose that the DPO communicates with the user to verify the authenticity of a transaction, including through separate communications such as text-SMS or other messaging, and ¶ [59] discloses that the merchant may communicate with the payment provider through a query or API call for determining payment methods to be presented to the user. Rose ¶ [47] also teaches protecting user information by configuring the user’s profile such that personally identifying information is not provided to the merchant and/or other entities. Thus, Rose teaches separate merchant facing and user facing communications associated with the payment transaction, as well as a user facing pop-up/lightbox through which payment information is presented and received.);
communicate the security code to the user computing device in a third channel separate from the first communication channel and the second communication channel (Rose ¶¶ [50 & 52-53]);
conduct the interaction utilizing an interaction path selected via the display (Rose ¶¶ [46, 53-56, 95, 115 & 126]); and
communicate an authorization for the interaction to the merchant computing device (Rose ¶¶ [90, 93 & 188]).
To the extent Rose is found not to expressly disclose that the instructions are transmitted in a second communication channel that is separate channel used to communicate with the merchant computing device, instructions to open the pop-up window such that the user computing device communicates directly with the server while bypassing the merchant computing device, it would have been obvious to one of ordinary skill in the art to configure Ros’s disclosed user facing lightbox/pop-up to communicate authentication and payment selection information directly with the DPO/payment server while maintaining the merchant facing communication separately. One of ordinary skill would have been motivated to make such a modification to permit the DPO/payment provider to authenticate the user and process the selected payment option while furthering Rose’s expressly disclosed objective of preventing personally identifying information from being provided to the merchant (Rose ¶ [47]). Such a configuration would have predictably used Rose’s disclosed payment provider, user interface, and communication functionality for their established purposes while limiting the merchant’s access to sensitive user information.
The claim recites the options in the alternative, so under BRI disclosing either one satisfies the limitation (MPEP 2131.02). As to the “equal payment plan”, the limitation is met by the rewards points alternative as explained above. Should the applicant argue that both options must be shown, Official Notice is taken that installment plans splitting a purchase amount into equal payments were notoriously well-known consumer payment option before the effective filing date. Rose’s DPO expressly selects and presents the most optimal, customized list of payment methods for each user (¶¶ [38, 58-59 & 105-106]). Including a known installment payment option amount the presented methods would have been the predictable use of a known payment technique in a system built to surface whatever payment option best fit the user. KSR, 550 U.S. at 417.
As per claims 10 & 19, the claims recite analogous limitations as claim 1 above and rejected under the same premise.
As per claim 2, Rose teaches the system of claim 1, Rose further teaches: wherein the application code instructions further cause the system to communicate a confirmation message to the user computing device that the interaction was conducted with the interaction path (Rose ¶¶ [55-56, 86, 121 & 130]).
As per claims 11 & 20, the claims recite analogous limitations as claim 2 above and rejected under the same premise.
As per claim 3, Rose teaches the system of claim 1, Rose further teaches: wherein the application code instructions further cause the system to determine whether the interaction path is eligible based on an analysis of an account of the user (Rose ¶¶ [56, 118-120, 128-130 & 342-343]).
As per claim 12, the claim recites analogous limitations as claim 3 above and rejected under the same premise.
As per claim 4, Rose teaches the system of claim 1, Rose further teaches: wherein the instructions are generated for a plug-in to open the pop-up window on the user computing device (Rose ¶¶ [38, 49 & 54-57]).
As per claim 13, the claim recites analogous limitations as claim 4 above and rejected under the same premise.
As per claim 5, Rose teaches the system of claim 4, Rose further teaches: wherein the application code instructions further cause the one or more processors to receive a communication from the user computing device in response to opening the pop-up window, wherein the communication comprises the security code and a selection of the interaction path (Rose ¶¶ [52-54]).
As per claim 14, the claim recites analogous limitations as claim 5 above and rejected under the same premise.
As per claim 6, Rose teaches the system of claim 4, Rose further teaches: wherein the pop-up window overlays the merchant user interface window utilized to conduct the interaction and is displayed over a checkout page of a merchant website (Rose ¶¶ [46, 55-56, 59, 397 & 429]).
As per claim 15, the claim recites analogous limitations as claim 6 above and rejected under the same premise.
As per claim 7, Rose teaches the system of claim 1, Rose further teaches: wherein the security code is communicated to the user computing device via a push notification or a text message (Rose ¶¶ [52, 121 & 130]).
As per claim 16, the claim recites analogous limitations as claim 7 above and rejected under the same premise.
As per claim 8, Rose teaches the system of claim 1, Rose further teaches: wherein the instructions further cause the one or more processors to determine, during the time period of the interaction, whether the user is eligible to pay for the interaction with the rewards points or is eligible to pay for the interaction using the equal payment plan (Rose ¶¶ [49, 64, 112, 118-120, 125 & 128-130]).
As per claim 17, the claim recites analogous limitations as claim 8 above and rejected under the same premise.
As per claim 9, Rose teaches the system of claim 1, Rose further teaches: wherein the interaction path is one of a plurality of interaction paths, the plurality of interaction paths comprising an option to pay for the interaction with a payment instrument (Rose ¶¶ [46-47]).
As per claim 18, the claim recites analogous limitations as claim 9 above and rejected under the same premise.
Response to Arguments
Applicant's arguments filed 08/28/2026 have been fully considered but they are not persuasive.
With respect to the rejection under 35 U.S.C. 101, Applicant argues that the amended independent claims integrate the abstract idea into a practical application under Step 2A, Prong Two because the recited three-channel architecture, pop-up window, and direct communication between the user computing device and the server while bypassing the merchant computing device allegedly improve the security of transaction authorizations. Applicant’s arguments have been fully considered but are not persuasive.
The amended claims do not recite a technological improvement to the functioning of a computer, network, or transaction-security technology. Although claim 1 recites transmitting instructions to open a pop-up window on the user computing device and specifies that the user computing device communicates directly with the server while bypassing the merchant computing device, the claims does not recite a particular technological technique for establishing or securing the communication channels, generating or operating the pop-up window, or modifying the operation of the underlying computer or network. Rather, the recited arrangement specifies where the payment options and security-code interface are presented and which computing devices communicate while carrying out the payment authorization process. Accordingly, the additional elements use the recited computer and network components to implement the abstract commercial interaction rather than provide a technological solution that improves the functioning of those components.
Applicant’s assertion that bypassing the merchant computing device thereby improves security does not establish that the claim reflects an improvement to computer or network technology. The asserted security benefit results from directing transaction information between particular participants in the payment authorization process, while the claim does not recite a technological mechanism by which the underlying communication or computing devices themselves are made more secure. Considered individually and as an ordered combination, the additional elements therefore do not integrate the abstract idea into a practical application under Step 2A, Prong Two. See MPEP §§ 2106.04(d)(1) and 2106.05(a). Independent claims 10 and 19 recite materially corresponding limitations and are unpersuasive for the same reasons.
Applicant argues the prior art of record in Rose (US 2020/0094133 A1), does not disclose the transmitting limitation of independent claims 1, 10 and 19 as amended, particularly the newly added requirement concerning instructions to open the pop-up window, specifically that Rose does not expressly disclose transmitting, in a second communication channel separate from the communication channel used to communicate with the merchant computing device, instructions to open the pop-up window such that the user computing device communicates directly with the server while bypassing the merchant computing device; however, the Examiner respectfully disagrees.
Although Rose describes the lightbox as being embedded on and seamlessly integrated with the merchant site (Rose ¶¶ [38 & 54-57]), such integration relates to the presentation of the payment interface to the user and does not require that all communications associated with the lightbox pass through the merchant computing device. Rose further discloses that DPO communications with the user to authenticate a transaction, including through text/SMS and other messaging (Rose ¶¶ [52-53]), while the merchant separately communicates with the payment provider through a query or API call for determining payment methods to be presented to the user (Rose ¶ [59]). Rose additionally teaches protecting user information by configuring the user’s profile such that personally identifying information is not provided to the merchant and/or other entities (Rose ¶ [47]).
Accordingly, Applicant’s argument that Rose’s lightbox is integrated with the merchant site does not overcome the rejection. To the extent Rose does not expressly disclose transmitting the instructions in the claimed second communication channel and configuring the user computing device to communicate directly with the server while bypassing the merchant computing device, it would have been obvious to one of ordinary skill in the art to configure Ros’s disclosed user facing lightbox/pop-up to communicate authentication and payment selection information directly with the DPO/payment server while maintaining the merchant facing communication separately. One of ordinary skill would have been motivated to make such a modification to permit the DPO/payment provider to authenticate the user and process the selected payment option while furthering Rose’s expressly disclosed objective of preventing personally identifying information from being provided to the merchant (Rose ¶ [47]). The modification would not require redirecting the user away from Rose’s merchant-integrated lightbox and would therefore remain consistent with Rose’s disclosed user experience.
Thus, although Applicant’s correctly identifies that Rose does not expressly disclose the communication arrangement. Applicant’s argument does not overcome the rejection under 35 USC 103 because the rejection does not rely on Rose as expressly disclosing that arrangement. Rather, as explained above, the claimed arrangement would have been obvious in view of Rose’s teachings. Accordingly, the rejection of independent claims 1, 10, and 19 under 35 USC 103 is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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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/T.P.K./Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696
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