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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,518,270. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites similar distinguishing features and is broader in scope than claim 1 of the reference patent.
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.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claim 1 falls into at least one of the four categories of statutory subject matter. The eligibility analysis proceeds to Step 2A.1.
Step 2A.1:
The limitations of independent claim 1 have been denoted with letters by the Examiner for easy reference. The judicial exceptions recited in claim 1 are identified in bold below:
A server comprising:
a communications module;
a processor coupled with the communications module; and
a memory coupled to the processor and storing processor-executable instructions which,
when executed by the processor, configure the processor to:
transmit data to a recipient computing device for presentation, the data including a selectable option to initiate a first transfer method that requires completion of an additional requirement not required for a second transfer method;
receive, from the recipient computing device, an indication of selection of the first transfer method;
verify completion of the additional requirement; and
in response to verifying completion of the additional requirement, initiate the first transfer method by sending transfer initiation data to a real-time transfer system.
Under the broadest reasonable interpretation, F-I recite limitations that are reasonably categorized under certain methods of organizing human activity. Specifically, the claimed limitations can be grouped as commercial or legal interactions in the form of sales activities. Providing an option to select a transfer method and verifying completion of a requirement to initiate the transfer method is an example of a financial transaction, or sales activity.
Claim 1 recites at least one abstract idea. The eligibility analysis proceeds to Step 2A.2.
Step 2A.2:
The judicial exception is not integrated into a practical application. In particular, claim 1 recites the additional element(s) not in bold above.
The additional elements have all been recited at a high-level of generality such that they amount to no more than generic computing components. Therefore, when the additional elements are considered individually and as an ordered combination with the abstract idea, the claims amount to no more than mere software instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea MPEP 2106.05(f). These additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Step 2B:
The additional elements, both individually and as an ordered combination, do not amount to significantly more than the judicial exception because the outcome of the considerations at Step 2B will be the same when considerations from Step 2A.2 are re-evaluated. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Claim 1 is not patent eligible.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea(s) into a patent eligible application such that the abstract idea amounts to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, claim 1 is rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tumminaro U.S. 2007/0244811.
Re Claim 1, Tumminaro discloses a server comprising:
a communications module [0150-0152];
a processor coupled with the communications module [0153]; and
a memory coupled to the processor and storing processor-executable instructions which, when executed by the processor, configure the processor to [0155]:
transmit data to a recipient computing device for presentation, the data including a selectable option to initiate a first transfer method that requires completion of an additional requirement not required for a second transfer method ([0031] – “displaying a first screen on a display of a mobile phone to show a number of options including a first option to pay money to another and a second option to request balance information,” first option to pay money to another is analogous to the first transfer method, which requires entering a target phone number, transaction amount, and PIN [0031]. Requesting balance information, i.e. second transfer method, does not require entering a target phone number and/or transaction amount, see [0745-749]);
receive, from the recipient computing device, an indication of selection of the first transfer method [0031] – “upon a user selecting the first option”;
verify completion of the additional requirement ([0568] – “guide the account holder for concluding the financial transaction…the account holder is guided through the process of constructing the SMS text message by the automatic insertion of the keyword, amount, target telephone, password, and messages, if any,” progressing through the display screens to enter the required information is analogous to verifying that the required information has been entered, i.e. completed); and
in response to verifying completion of the additional requirement, initiate the first transfer method by sending transfer initiation data to a real-time transfer system ([1091] – “Screen sequence instances also implement the behavior initiated by the completion of the screen sequence,” i.e. in response to verifying completion of the additional requirement, “this results in the invocation of a service method,” i.e. initiate the first transfer method, “that is, a call to a server-side service such as a person-to-person payment,” i.e. sending transfer initiation data to a real-time transfer system, [0324] – “financial transaction occurs almost instantaneously,” i.e. real-time).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fleishman et al. U.S. Patent 9,159,058 directed to online payment transfer and identity management system and method. See at least Col. 9, line 61 to Col. 10, line 29.
Bishop et al. U.S. 2009/0299841 directed to systems and methods for processing transactions using multiple budgets. See at least [0073, 79, 80]
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE DANG whose telephone number is (571)270-5880. The examiner can normally be reached M-F 9-5pm MT.
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/CHRISTINE DANG/Examiner, Art Unit 3698
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