DETAILED ACTION
1. 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 .
2. Status of Application and Claims
Claims 1, 4-5, 7, 16 and 18-20 are pending.
Claims 1 and 16 were amended or newly added in the Applicant’s filing on 6/10/2026.
This office action is being issued in response to the Applicant's filing on 6/10/2026.
3. Claim Interpretation
The subject matter of a properly construed claim is defined by the terms that limit its scope when given their broadest reasonable interpretation. see MPEP §2013(I)(C). Specifically, the “broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). However, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See MPEP §2111, citing In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984).
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. See MPEP §2013(I)(C).
As such, claim limitations that contain statement(s) such as “if,” “may,” “might,” “can,” and “could” are treated as containing optional language. See MPEP §2013(I)(C). As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted. See MPEP §2013(I)(C).
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. See MPEP §2111.04(II). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See MPEP §2143.03, citing Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009);
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble. See MPEP §2111.02;
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby.” See MPEP §2111.04;
Contingent limitations. See MPEP §2111.04(II);
Printed matter. See MPEP §2111.05; and
Functional language associated with a claim term. See MPEP §2181.
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following italicized, underlined and/or boldened language is interpreted as not further limiting the scope of the claimed invention.
Additionally, the following italicized, underlined and emboldened language is not necessarily an exhaustive list of claim language that is interpreted as not further limiting the scope of the claimed invention. Applicant should review all claims for additional claim interpretation issues.
Claim 1 recites a method comprising:
translating, by the bankcard issuer computing system, at least a portion of the payment authorization data into tokenized bankcard data;
providing, by the bankcard issuer computing system, the payment authorization data with the tokenized bankcard data and a currency request that includes an amount of currency being requested;
receiving, by a terminal via a short-range radio transceiver device from a mobile wallet app that executes on a mobile device, the payment authorization data;
receiving, via the at least one user interface device, a currency request include an amount of currency requested;
transmitting the currency request and payment authorization data including the tokenized bankcard data from the terminal via a bankcard payment network to a token service provider, wherein the payment authorization data includes tokenized bankcard data generated from a bankcard account of a user;
Under the broadest reasonable interpretation, the entirety of payment authorization data (i.e., all data is “at least a portion of the” data) is translated into tokenized bankcard data. As such, “payment authorization data including the tokenized bankcard data” is tokenized bankcard data.
Claim 1 recites a method comprising:
transmitting the currency request and payment authorization data including the tokenized bankcard data from the terminal via a bankcard payment network to a service provider, wherein the payment authorization data includes tokenized bankcard data generated from a bank account of a user.
Method claims are defined by the method steps being actively performed, not method steps performed in the past (i.e., tokenized bankcard data generated). Claiming method steps in the past tense can be interpreted as the method steps performed in the past are outside the scope of the claimed method. Alternatively stated, the scope of the claimed method are the active method steps which are building off a pre-existing state. The method steps performed for creation of the pre-existing state are outside the scope of the claimed invention.
Claim 1 recites a method comprising:
dispensing, by the terminal, currency stored in a currency cassette by a currency dispenser in the amount of currency request from the terminal to the user, wherein the currency dispenser is activated only after receiving the user confirmation from the mobile device and only after receiving a currency request response via the bankcard payment network authorizing dispensing of the amount of the currency request.
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent is not met. See MPEP §2111.04(II).
Usage of the term and/or phrase “only after receiving a currency request response via the bankcard payment network authorizing dispensing of the amount of the currency request” in Claim 1 suggests that there remains the possibility that the contingent limitations are not performed as the condition(s) precedent is not met. Examiner notes that, while Claim 1 recites that the terminal receives the user confirmation from the mobile device, Claim 1 does not recite that the terminal receives a currency request response via the bankcard payment network authorizing dispensing of the amount of the currency request.
Therefore, the claim limitations based upon the condition are optional claim limitations. As a matter of linguistic precision, optional claim limitations do not narrow the scope of the invention, since they can always be omitted. See MPEP §2111.04(II).
As the Applicant does not address what happens should the optional claim limitation(s) fail, Examiner assumes that nothing happens (i.e., the method stops). An alternative interpretation is merely the claim limitation(s) based upon the con1dition(s) are not triggered or performed.
Claim 16 recites a system to perform data processing activities comprising:
receiving, via the short-range radio transceiver device from a mobile wallet app that executes on a mobile device operated by a user, payment authorization data associated with a bankcard account of the user, the payment authorization data including tokenized bankcard data.
Claim elements (i.e., contents of received data) pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
4. 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, 4-5, 7, 16 and 18-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
STEP 1
The claimed invention falls within one of the four statutory categories of invention (i.e., process, machine, manufacture and composition of matter). See MPEP §2106.03.
STEP 2A – PRONG ONE
The claim(s) recite(s) a method and a system to perform a method comprising:
authenticating, by a bankcard issuer …, payment authorization data associated with a bankcard;
translating, by the bankcard issuer …, at least a portion of the payment authorization data into … bankcard data;
providing, by the bankcard issuer …, the payment authorization data with the … bankcard data and a currency request that includes an amount of currency being requested;
receiving, …, the payment authorization data;
receiving, …, a currency request include an amount of currency requested:
transmitting the currency request and payment authorization data including the … bankcard data … to a … service provider, wherein the payment authorization includes tokenized bankcard data generated from a bankcard account of a user;
translating, by the … service provider, the … bankcard data into a standardized card number associated with the bankcard issuer computing system;
transmitting, …, a request for user confirmation;
receiving, …, the user confirmation; and
dispensing, …, currency …. in the amount of currency request … to the user, wherein the currency … is [dispensed] only after receiving user confirmation … and only after receiving a currency request response … authorizing dispensing of the amount of the currency request.
These limitations, as drafted, under its broadest reasonable interpretation, covers a series of steps instructing how to process a financial transaction (i.e., a withdrawal transaction) which is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(A).
Examiner notes that processing payments is a court-provided example of a fundamental economic practice. See MPEP §2106.04(a)(2)(II)(A), citing Inventor Holdings, LLC v. Bed Bath Beyond, 876 F.3d 1372, 1378-79, 125 USPQ2d 1019, 1023 (Fed. Cir. 2017).
Accordingly, the claimed invention recites an abstract idea.
STEP 2A – PRONG TWO
The claimed invention recites additional elements (i.e., computer elements) of a computing system (Claim(s) 1), a terminal or terminal controller (Claim(s) 1 and 16), a short-range radio transceiver device (Claim(s) 1 and 16), a mobile app (Claim(s) 1 and 16), a mobile device (Claim(s) 1 and 16), a user interface device (Claim(s) 1 and 16), a currency cassette (Claim(s) 1 and 16), a currency dispenser (Claim(s) 1 and 16), tokenized data, (Claim(s) 1 and 16), a processor (Claim(s) 16), a memory device (Claim(s) 16), a network interface device (Claim(s) 16).
The claimed invention does not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field; improvements to the functioning of the computer itself; are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; are not applying the judicial exception with or by use of a particular machine; are not effecting a transformation or reduction of a particular article to a different state or thing; and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §2106.04(d).
The additional elements are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. See MPEP §2106.05(f). Alternately, the additional elements amount to no more than generally linking the exception to a particular technological environment or field of use. See MPEP §2106.05(h). Accordingly, these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claimed invention is directed to an abstract idea without a practical application.
STEP 2B
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer. See MPEP §2106.07(a)(II). The same analysis applies in Step 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. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
DEPENDENT CLAIMS
Dependent Claim(s) 4, 5, 7, 19 and 20 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 1 and 16. As such, the dependent claims are also grouped an abstract idea utilizing the same rationale as previously asserted against the independent claims.
No additional computer components other than those found in the respective independent claims is recited, thus it is presumed that the claim is further utilizing the same generically recited computer.
As such, the dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the judicial exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination.
Accordingly, the dependent claim(s) are also not patent eligible.
Appropriate correction is requested.
5. Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4-5, 7, 16 and 18-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites a method comprising:
dispensing, by the terminal, currency stored in a currency cassette by a currency dispenser in the amount of currency request from the terminal to the user, wherein the currency dispenser is activated only after receiving the user confirmation from the mobile device and only after receiving a currency request response via the bankcard payment network authorizing dispensing of the amount of the currency request.
The specification supports a method comprising:
dispensing, by the terminal, currency stored in a currency cassette by a currency dispenser in the amount of currency request from the terminal to the user, wherein the currency dispenser is activated after receiving the user confirmation from the mobile device and after receiving a currency request response via the bankcard payment network authorizing dispensing of the amount of the currency request.
The specification does not support the exclusionary language of “only.”
Claim 16, due to similar language, results in a similar rejection.
Appropriate correction is requested.
6. Claim Rejections - 35 USC § 112 (b)
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, 4, 5 and 7 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.
Claim 1 recites a method comprising:
translating, by the bankcard issuer computing system, at least a portion of the payment authorization data into tokenized bankcard data;
providing, by the bankcard issuer computing system, the payment authorization data with the tokenized bankcard data and a currency request that includes an amount of currency being requested;
receiving, by a terminal via a short-range radio transceiver device from a mobile wallet app that executes on a mobile device, the payment authorization data;
receiving, via the at least one user interface device, a currency request include an amount of currency requested;
transmitting the currency request and payment authorization data including the tokenized bankcard data from the terminal via a bankcard payment network to a token service provider, wherein the payment authorization data includes tokenized bankcard data generated from a bankcard account of a user;
Claim 1 recites a method step comprising translating payment authorization data into tokenized bankcard data. The payment authorization data is being turned into tokenized bankcard data.
Claim 1 recites a method step wherein the tokenized bankcard data is generated (i.e., in the past) from a bankcard account of a user.
Does translation and generation of the tokenized bankcard data refer to the same process using different terminology? And does that mean that the method step of translating the payment authorization data involves bankcard account of a user?
Appropriate correction is requested.
7. Claim Rejections - 35 USC § 103
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1, 4, 5, 7, 16 and 18-20 are rejected under 35 U.S.C. 103 as obvious over Varadarajan (US PG Pub. 2011/0238573) in view of Aabye (US PG Pub. 2014/0164243) and Kay (US PG Pub. 2013/0124410).
Regarding Claim 1, Varadarajan discloses a method comprising:
authenticating, by a bankcard issuer computing system (provider system), payment authorization data (authentication information) associated with a bankcard. (see fig.3 and 4; para. 51);
translating (encrypting, obfuscating or camouflaging), by the bankcard issuer computing system, at least a portion of the authorization data into encrypted bankcard data (transaction identifier/transaction authenticator). (see fig. 3 and 4; para. 34, 54 and 56);
providing, by the bankcard issuer computing system, the payment authorization data with encrypted bankcard data (transaction identifier/transaction authenticator) and a currency request that includes an amount of currency being requested (transaction amount/sufficient funds). (see fig. 3 and 4; para. 36, 51, 54 and 56);
receiving by a terminal (ATM) via a short-range radio transceiver device (e.g., RFID, Bluetooth or NFC) from a mobile wallet app that executes on a mobile device, the payment authorization data (transaction identifier/transaction authenticator). (see abstract; fig. 3 and 4; para. 57-58);
receiving, by the at least one user interface device (device keypad), a currency request including an amount of currency requested (amount of the transaction). (see para. 56);
transmitting the currency request and payment authorization data including the encrypted bankcard data from the terminal (ATM) via a bankcard payment network to a service provider, wherein the payment authorization data includes encrypted bankcard data (transaction identifier/transaction authenticator) generated from a bank account of a user. (see fig. 3 and 4; para. 69-70);
translating (decrypting), by the service provider, encrypted bankcard data (transaction identifier/transaction authorization) into a standardized card number (account number) of a bankcard issuer computing system. (see para. 36, 54 and 62);
transmitting, by the terminal to the mobile device, a request for user confirmation (additional authentication). (see para. 40 and 50);
receiving, by the terminal from the mobile device, the user confirmation (additional authentication information). (see fig. 3; para. 40 and 59); and
dispensing, by the terminal, currency stored in a currency cassette by a currency dispenser (fund dispenser) in the amount of the currency request from the terminal to the user, wherein the currency dispenser is activated only after receiving the user confirmation (additional authentication information) from the mobile device and only after receiving a currency request response (transaction authorization result) via the bankcard payment network authorizing dispensing of the amount of the currency request. (see fig. 3; para. 6 and 43).
Varadarajan does not explicitly teach a method wherein the encrypting/decrypting service provider is separate and distinct from the card issuer computing system.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Varadarajan by separating one composite claim element contained in Varadarajan (i.e., one system) into component claim elements (e.g., a first system and a second system) wherein each component claim element would serve the same separate function performed when it was a component in the original composite claim element. In the separation each component claim element, would merely have performed the same function as it did previously, and one of ordinary skill in the art at the effective filing date of the invention would have recognized that the results of the separation were predictable. See MPEP §2144.04 (V)(C).
Varadarajan does not explicitly teach a method wherein the encrypted data is tokenized (i.e., data encryption via substitution of a sensitive data element with a non-sensitive data element), although Varadarajan does recite that the data can be secured “by any method of encryption, obfuscation, camouflaging or other cryptographic or data security technique.” (see para. 74).
Regardless, Aabye discloses a method wherein:
the data is tokenized data (see para. 2); and
translating (reverse tokenization) tokenized data is performed by a token service provider. (see para. 2 and 93).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Varadarajan by incorporating tokenization of data to encrypt data, as disclosed by Aabye, as tokenization of data is a standard and conventional means by which to protect sensitive data.
Varadarajan does not explicitly teach a method comprising transmitting, by the terminal to the mobile device, a request for user confirmation, although Varadarajan discloses a method comprising transmitting, to the mobile device, a request (prompt) for user confirmation (authentication information) (see para. 40), and that data is exchanged between mobile device and terminal interfaces (see fig. 1; para. 40).
Regardless, Kay discloses a method comprising:
transmitting, by the terminal (financial transaction terminal) to the mobile device, a request for user confirmation (confirmation). (see para. 53); and
receiving, by the terminal from the mobile device, the user confirmation. (see para. 53).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Varadarajan and Aabye by incorporating the inclusion of a confirmation process, as disclosed by Kay, thereby ensuring that the user desired to proceed with the financial transaction before completing the financial transaction.
Regarding Claim 4, Varadarajan discloses a method wherein the short-range radio transceiver device is a Near-Field Communication (NFC) radio transceiver device (near field communication means). (see abstract).
Regarding Claim 5, Varadarajan discloses a method wherein the terminal is an Automated Teller Machine (ATM). (see abstract).
Regarding Claim 7, Varadarajan discloses a method wherein the bankcard is a credit card. (see para. 22).
Regarding Claims 16 and 18-20, such claims recite substantially similar limitations as claimed in previously rejected claims and, therefore, would have been obvious based upon previously rejected claims or are otherwise disclosed by the prior art applied in previously rejected claims.
8. Response to Arguments
Applicants’ arguments with respect to the pending claims have been considered. Some arguments have been rendered moot based upon amended claim language. However, some arguments remain relevant, as they apply to a reference and/or rejection still utilized in the current rejection. Such arguments have been fully considered but are not persuasive and are addressed below.
§101 Rejection
Step 2A Prong One
Applicant argues that the claimed invention is not “directed solely to” a judicial exception and, as such, satisfies Step 2A Prong One of the §101 Guidelines. See Arguments, pp. 6-7.
Specifically, Applicant argues:
Applicant does not concede that the claims are directed solely to an abstract idea. The claims recite a specific, technical arrangement: a terminal equipped with a short-range radio transceiver device receives tokenized payment authorization data from a mobile wallet app, transmits that data over a bankcard payment network to a token service provider that translates the tokenized bankcard data into a standardized card number, and then conditions activation of the currency dispenser on both a network-based authorization response and a real-time user confirmation received from the mobile device. This is a specific technical process tied to the physical architecture of the terminal and its interactions with a mobile device, a short-range radio transceiver, a bankcard payment network, a token service provider, and a currency dispensing mechanism. This is not a method of organizing human activity or a fundamental economic practice performed on generic components. See Arguments, p. 7 – emphasis added.
The Examiner respectfully disagrees.
MPEP §2106.04(a) recites:
Examiners should determine whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas listed above. The groupings of abstract ideas, and their relationship to the body of judicial precedent, are further discussed in MPEP § 2106.04(a)(2).
The proper standard under Step 2A Prong One of the §101 Guidelines is whether the claims recite an abstract idea. The claims recite an abstract idea, specifically the claims recite a methodology for processing a financial transaction (i.e., a withdrawal transaction) which is a fundamental economic practice.
Admittedly, the claimed invention is utilizing a “specific, technical arrangement” to perform the abstract idea. But these are additional elements (i.e., computerized elements) and additional elements are examined under Step 2A Prong Two, to determine whether any additional elements in the claim integrate the abstract idea into a practical application, not Step 2A Prong One. See MPEP §2106.05(f)(2).
Step 2A Prong Two
Applicant argues that the claimed invention recites a practical application, specifically “an improvement in the functioning of a computer, or an improvement to other technology or technical field,” and, as such, satisfies Step 2A Prong Two of the §101 Guidelines. See Arguments, pp. 7-10.
Specifically, Applicant argues:
The same principle applies here. The Examiner has characterized the claims at a high level of generality as covering "processing a financial transaction," without adequately accounting for the specific technical elements recited in the claims. The amended claims recite a concrete technical improvement: a terminal that, by using a short-range radio transceiver device to receive tokenized payment authorization data from a mobile wallet app, and by conditioning physical currency dispensing on both a bankcard-network authorization and a real-time user confirmation received from the mobile device, operates differently and more securely than conventional ATM systems that rely on physical card insertion and PIN entry at the terminal itself. This is precisely the type of improvement to an existing technology that the Desjardins ARP, Enfish, and related authorities hold to be patent eligible. See Arguments, pp. 7-8 – emphasis added.
The Examiner respectfully disagrees.
MPEP §2106.05(a) recites:
If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. – emphasis added.
The specification does not provide any evidence that there is a technical problem (i.e., a technology-based problem) to be solved. For example, the specification does not provide any evidence that there was a technology-based problem that prevented existing and conventional technology from performing the claimed process.
The specification does not provide any evidence that the claimed invention results in an improvement to the functioning of a computer, or an improvement to conventional technology or technological processes. For example, the specification does not provide any evidence that the functionality of a computer or conventional technology has been improved, or their technological capabilities have been expanded beyond their existing capabilities.
Applicant further argues:
The PTAB recently applied Desjardins in Ex parte Kelley, Appeal 2026-000066, Application 18/456,924 (Apr. 1, 2026), reversing a § 101 rejection where claims were directed to replacing non- linear constraints with linear proxy constraints in a machine learning optimization context. The Board in Kelley held that where the specification identifies a technical problem-computationally intensive processing-and the claims recite a specific technical solution to that problem reflected in the claim language, the claims integrate the abstract idea into a practical application. Here, the specification of the present application identifies the technical problem: "Point-Of-Sale (POS) and Automated Teller Machines (ATM) typically require physical bankcards to obtain currency," and the claims provide a specific technical solution through the use of a short-range radio transceiver device to receive tokenized data from a mobile wallet app, coupled with a two-stage dispensing condition-network authorization and mobile-device confirmation-that is architecturally distinct from conventional ATM operation. See Arguments, p. 8 – emphasis added.
The Examiner respectfully disagrees.
Regarding Applicant’s recitation of PTAB case decisions (i.e., Ex Parte Kelley), PTAB decisions do not represent binding precedent or official US Patent & Trademark Office policy. Moreover, PTAB decisions are fact specific to the case being decided and, therefore, lack general applicability.
Additionally, the specification recites:
Modern consumers are transacting without physical bankcards. This is driven by a desire to carry less items such as bankcards and cash. Consumers desire fast, secure, and seamless access to their payment accounts when conducting purchase transactions. However, current mobile wallet solutions generally do not provide ready access to cash. Point-Of-Sale (POS) and Automated Teller Machines (ATM) typically require physical bankcards to obtain currency. See specification, para. 1 – emphasis added.
The specification does not provide any evidence that there is a technical problem (e.g., POS and ATM technology is incapable of processing a transaction without physical bankcards).
The specification recites that “[m]odern consumers are transacting without physical bankcards.” See para. 1. As such, modern consumers are already processing transactions without physical bankcards.
And if POS and ATM “typically require physical bankcards to obtain currency” that does not mean that POS and ATM technology is incapable of processing a transaction without physical bankcards. Yes, typically (i.e., usually, conventionally, normally) POS and ATM do not process a transaction without physical bankcards. But just because a POS or ATM typically requires a physical bankcard does not mean that a POS or ATM is incapable of processing a transaction without physical bankcards.
Applicant argues that the claimed invention is analogous to Enfish, LLC v. Microsoft Corp. (Fed. Cir. 2016) and, as such, satisfies Step 2A Prong Two. See Arguments, pp. 8-9.
The Examiner respectfully disagrees.
The court in Electric Power Group LLC v. Alstom SA (Fed. Cir. 2016) stated:
The claims here are unlike the claims in Enfish. There, we relied on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas” (in Alice, as in so many other § 101 cases, the abstract ideas being the creation and manipulation of legal obligations such as contracts involved in fundamental economic practices). Enfish, 822 F.3d at 1335-36; see Alice, 134 S. Ct. at 2358-59. That distinction, the Supreme Court recognized, has common-sense force even if it may present line-drawing challenges because of the programmable nature of ordinary existing computers. In Enfish, we applied the distinction to reject the § 101 challenge at stage one because the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement—a particular database technique—in how computers could carry out one of their basic functions of storage and retrieval of data. Enfish, 822 F.3d at 1335-36; see Bascom, 2016 U.S. App. LEXIS 11687, 2016 WL 3514158, at *5; cf. Alice, 134 S. Ct. at 2360 (noting basic storage function of generic computer). The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. see Electric Power Group LLC v. Alstom SA, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016) – emphasis added.
The claimed invention is not an improvement to computer technology or computer functionality. Rather, the claimed invention is applying a computer’s existing capabilities to implement a particular abstract idea. As in Electric Power Group, the focus of the claimed invention is not on an improvement in computers as tools but on improving an abstract idea (i.e., processing a financial transaction) that uses computers as tools.
Applicant argues that the claimed invention is analogous to DDR Holdings, LLC v. Hotels.com (Fed. Cir. 2014) and, as such, satisfies Step 2A Prong Two. See Arguments, p. 9.
The Examiner respectfully disagrees.
In DDR Holdings, LLC v. Hotels.com, the U.S. Court of Appeals stated:
As an initial matter, it is true that the claims here are similar to the claims in the cases discussed above in the sense that the claims involve both a computer and the Internet. But these claims stand apart because they do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks. See DDR Holdings, LLC v. Hotels.com, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) – emphasis added.
Unlike in DDR Holdings, the specification does not provide any evidence that there is “a problem specifically arising in the realm of computer computers” or any technical (i.e., technology-based) problem.
MPEP §2106.04(d) recites:
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
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, as discussed in MPEP § 2106.05(f).
Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
Examiner asserts that the additional elements amount to merely (1) including instructions to implement an abstract idea on a computer or merely using a computer as a tool to perform an abstract idea, or alternatively, (2) merely links the use of a judicial exception to a particular technological environment or field of use.
Step 2B
Applicant argues that the additional elements amount to “significantly more” than the abstract idea as the additional elements are not “well-understood, routine, conventional activity previously known to the industry” and, as such, satisfies Step 2B of the §101 Guidelines.
The Examiner respectfully disagrees.
First, claim limitations that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception include (i) adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a compute, (ii) simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, (iii) adding insignificant extra-solution activity to the judicial exception, or (iv) generally linking the use of the judicial exception to a particular technological environment or field of use. See MPEP §2106.05(I)(A).
Examiner asserts that the additional claim element(s) amount to (i) adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer not (ii) simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. As such, no analysis under Berkheimer is necessary, as Berkheimer analysis pertains to whether appended activities constitute “well-understood, routine, conventional activities previously known to the industry.”
§ 103 Rejection
Applicant argues that the previously asserted prior art (Varadarajan, Aabye and Kay) fail to teach or suggest the claimed invention. See Arguments, pp. 12-15.
Specifically, Applicant argues:
The Examiner cites Varadarajan for the mobile wallet app receiving and ATM communication aspects of the claims. However, Varadarajan does not disclose receiving, by a terminal via a short-range radio transceiver device from a mobile wallet app, payment authorization data that already includes tokenized bankcard data in the sense of tokenization as understood in the payment network context. See Arguments, p. 13.
The Examiner respectfully disagrees.
Claim 1, as written, recites a method comprising receiving, by a terminal via a short-range radio transceiver device from a mobile wallet app, payment authorization data. Not necessarily payment authorization data that includes the tokenized bankcard data.
The claims, as written, recite a method comprising translating the payment authorization data into tokenized bankcard data (i.e., payment authorization data that already includes tokenized bankcard data) and providing the tokenized bankcard data to some other entity. The recipient is not identified. That recipient is not necessarily the mobile wallet app.
Perhaps Applicant intends to claim that the tokenized bankcard data (i.e., payment authorization data that already includes tokenized bankcard data) is provided by the bankcard issuer computing system to the mobile wallet app on a mobile device, and the mobile app on the mobile device delivers that data to the terminal. But that is not what is claimed.
Under the broadest reasonable interpretation, the terminal is receiving payment authorization data (i.e., a transaction identifier or transaction authentication) from a mobile wallet app, not tokenized bankcard data.
Varadarajan discloses a terminal (i.e., ATM) receiving via a short-range radio transceiver device (i.e., RFID, Bluetooth or NFC) payment authorization data (i.e., a transaction identifier or transaction authentication) from a mobile wallet app. See abstract; fig. 3 and 4; para. 57-58.
Claim 16, as written, recites a terminal performing activities comprising receiving, via the short-range radio transceiver device from a mobile wallet app that executes on a mobile device operated by a user, payment authorization data associated with a bankcard account of the user, the payment authorization data including tokenized bankcard data.
However, the payment authorization data associated with a bankcard account of the user, the payment authorization data including tokenized bankcard data is nonfunctional descriptive material and is not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Applicant further argues:
Varadarajan discloses that transaction information may be encrypted, obfuscated, or camouflaged, and that a transaction identifier may be substituted for transaction information. This is not the same as the tokenization of a bankcard account number using a token derivation key and a token service provider that translates the tokenized data back into a standardized card number, as recited in the amended claims and as described in the specification. The specification describes that "the token service provider 110 is a system that operates to translate a tokenized form of the credit or debit card data into actual card number data that can be processed to the cardholder's account," describing a specific token service provider infrastructure distinct from the encryption and obfuscation described by Varadarajan. See Arguments, p. 12.
The Examiner respectfully disagrees.
During examination, claims are to be “given their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). However, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004).
While the specification recites a token derivation key and a specific token service provider infrastructure, those elements are not imported into the claim limitations.
Under the broadest reasonable construction, tokenized data is sensitive data (e.g., a bankcard account number) has been replaced with nonsensitive data (e.g., a pseudo-account number), called a token, which has no exploitable value outside of the system.
Under the broadest reasonable construction, a token service provider is a service provider that either tokenizes the sensitive data into nonsensitive data or detokenizes nonsensitive data back into sensitive data.
Applicant further argues:
The Examiner relies on Aabye for the tokenization aspect of the claims. While Aabye discloses tokenization and reverse tokenization of a real account identifier into an account token and back, Aabye's system involves a payment processing network that receives an authorization request message including an account token from a merchant computer, determines the real account identifier, and if the transaction is approved, transmits an authorization response message including the real account identifier. Aabye's system does not involve a terminal receiving tokenized bankcard data from a mobile wallet app via a short-range radio transceiver device, nor does it involve a separate token service provider receiving and translating tokenized data transmitted from the terminal via a bankcard payment network as a distinct step in the currency dispensing process. See Arguments, pp. 13-14 – emphasis added.
The Examiner respectfully disagrees.
Claim 1, as written, recites a method comprising receiving, by a terminal via a short-range radio transceiver device from a mobile wallet app, payment authorization data. Not necessarily receiving tokenized bankcard data.
Claim 16, as written, recites a terminal performing activities comprising receiving, via the short-range radio transceiver device from a mobile wallet app that executes on a mobile device operated by a user, payment authorization data associated with a bankcard account of the user, the payment authorization data including tokenized bankcard data.
However, the payment authorization data associated with a bankcard account of the user, the payment authorization data including tokenized bankcard data is nonfunctional descriptive material and is not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Only Claim 1, as written, recites a method comprising transmitting the tokenized bankcard data to a token service provider and the token service provider translating the tokenized bankcard data.
Claim 16, as written, does not recite a token service provider or translation of the tokenized bankcard data.
Applicant further argues:
The Examiner relies on Kay for the user confirmation step. Kay discloses that a financial transaction terminal may transmit information to a mobile device and receive information from the mobile device during a communication session, including "confirmation by the customer." However, Kay does not disclose conditioning the activation of a currency dispenser on both a network-based authorization response and a separately received user confirmation from the mobile device. In Kay, the customer initiates the transaction on the mobile device, is directed to the nearest ATM, and taps the mobile device on the NFC reader to complete the transaction. The confirmation described in Kay is part of the general communication session between the terminal and the mobile device, not a specific two-condition currency dispenser activation requirement of the type recited in amended claim 1. See Arguments, p. 14 – emphasis added.
The Examiner respectfully disagrees.
Kay recites:
The financial transaction terminal may use a display of the financial transaction terminal to communicate with the customer, or alternatively, the financial transaction terminal may use a display of the mobile device to communicate with the customer. The financial transaction device may require the customer to enter the PIN for authorization using the financial transaction terminal or the mobile device. Once authorized, the financial transaction terminal can prompt the customer, using the financial transaction terminal or the mobile device, that cash is being dispensed from the financial transaction terminal. During the communication session between the financial transaction terminal and the mobile device, the financial transaction terminal transmits to and receives information from the bank regarding the requested transaction, authentication information of the customer, and account information of the customer. During the communication session, the financial transaction terminal also transmits to and receives information from the mobile device regarding the requested transaction, authentication information of the customer, account information of the customer, confirmation by the customer, and input from the customer into the mobile device for commanding the financial transaction terminal. See para. 53 – emphasis added.
Even if Kay discloses “the customer initiates the transaction on the mobile device, is directed to the nearest ATM, and taps the mobile device on the NFC reader to complete the transaction,” Kay also discloses “a financial transaction terminal may transmit information to a mobile device and receive information from the mobile device during a communication session, including confirmation by the customer.” See para. 53.
Additionally, "one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references." See MPEP §2145(IV), citing In re Keller, Terry, and Davies, 208 USPQ 871, 882 (CCPA 1981). In the instant case, applicant refutes each prior art reference individually, rather than viewing them in combination, in light of the totality of their combined teachings.
While Kay might not disclose “a specific two-condition currency dispenser activation requirement of the type recited in amended claim,” Varadarajan does disclose “a specific two-condition currency dispenser activation requirement of the type recited in amended claim.” Kay discloses utilizing a communication session between a terminal and a mobile device to obtain a user confirmation, enabling communication of one of the two data elements required to satisfy one of the two conditions.
Applicant further argues:
The Examiner's rationale for combining Varadarajan and Aabye is that "tokenization of data is a standard and conventional means by which to protect sensitive data." While tokenization may be known, the mere fact that a technique is known does not establish that it would have been obvious to incorporate it into a different system in the specific manner claimed. The amended claim recites a specific flow in which tokenized bankcard data originates at the mobile wallet app, is received by the terminal via a short-range radio transceiver, is transmitted by the terminal to a token service provider via a bankcard payment network, and is translated by the token service provider into a standardized card number-with the currency dispenser's activation conditioned on both the resulting network authorization and a subsequent user confirmation from the mobile device. The combination of Varadarajan, Aabye, and Kay does not teach this specific integrated arrangement. See Arguments, pp. 14-15 – emphasis added.
The Examiner respectfully disagrees.
Claim 1, as written, does not recite a method wherein tokenized bankcard data originates at the mobile wallet app or is received by the terminal via a short-range radio transceiver.
Claim 16, as written, does not recite a system wherein the tokenized bankcard data is transmitted by the terminal to a token service provider via a bankcard payment network or is translated by the token service provider into a standardized card number.
Varadajaran discloses the claimed invention except for tokenization and detokenization of the bankcard data. Varadajaran discloses “encryption, camouflaging or obfuscation of information provided by the mobile user device 20 to the provider system through the ATM 30 or through the network,” but not tokenization specifically. See para. 35.
Aabye discloses encryption, camouflaging or obfuscation of information via tokenization. See para. 2 and 93.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Varadarajan by incorporating tokenization of data to encrypt data, as disclosed by Aabye, as tokenization of data is a standard and conventional means by which to protect sensitive data.
The courts have stated that “[a] suggestion, teaching, or motivation to combine the relevant prior art teachings does not have to be found explicitly in the prior art, as the teaching, motivation, or suggestion may be implicit from the prior art as a whole, rather than expressly stated in the references...The test for an implicit showing is what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art… there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See In re Kahn, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
Examiner asserts that he can and/or has provided such “articulated reasoning” to support the legal conclusion of obviousness.
Applicant further argues:
The Examiner's rationale for incorporating Kay's confirmation step is "thereby ensuring that the user desired to proceed with the financial transaction before completing the financial transaction." However, the amended claim 1 does not merely add a general confirmation step. The amended claim requires that the currency dispenser be activated only after receiving both the network authorization response and the user confirmation from the mobile device a specific two condition dispensing architecture not taught by any of the references or their combination. See Arguments, p. 15 – emphasis added.
The Examiner respectfully disagrees.
While the amended Claim 1 does “not merely add a general confirmation step,” Kay is being brought in establish that a terminal requesting and receiving a user confirmation from a mobile device was known in the art. Kay does not need to disclose other features (e.g., a specific two condition dispensing architecture) taught by the primary reference, Varadarajan.
9. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON M. BORLINGHAUS whose telephone number is (571)272-6924. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RYAN D. DONLON can be reached at (571)270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 September 25, 2026
