DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/08/2025 has been entered.
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the RCE filed on 09/08/2025.
Claims 1-35 have been canceled.
Claims 36-65 are currently pending and have been examined.
Response to Arguments
Applicant's arguments filed 09/08/2025 with respect to the 101 rejection have been fully considered but they are not persuasive.
Applicant argues #1:
Step 2A - Prong 1
The Office Action suggests that the previous claims were directed to "certain methods of organizing human activity" alleging the claims were directed to commercial or legal interactions. The Applicant respectfully traverses.
As would be understood by the skilled person, the claims are directed to a computational system which stores an identifier in a tamper-resistant secure element of a mobile device, where the identifier has been provisioned at an account administrator system to associate the identifier with payment account preferences. The method subsequently involves generating a transaction request data set which includes data fields defined by a payment protocol including the previously stored identifier in a discretionary or hidden field of the payment protocol.
The specific combination of technical steps and communication involving the identifier including its storage in a secure element and subsequent use in at least one discretionary or hidden field in a payment protocol communication are specific computer operations which as discussed below provide technical improvements and would not exist if performed in the human mind. For at least these reasons, the claims are not directed to a judicial exception.
Examiners response:
The Examiner respectfully disagrees, using the discretionary field and storing data in the tamper-resistant memory and sending the data is not indicative of a technical improvement as the discretionary field and memory are being used as tools and their intended purposes for implementing the abstract idea. Additionally, in the analysis of Step 2A Prong 1, Prong One asks does the claim recite an abstract idea, law of nature, or natural phenomenon?, which as shown in the rejection, the claims do recite an idea which falls into one of the categories of abstract ideas. With regards to the human mind/pen and paper test, as an initial matter, just because an idea cannot be performed with a pen and paper or in the human mind does not mean it’s not directed towards an abstract idea and the Examiner did not rely on grouping the claims into the Mental Processes grouping of abstract ideas for the analysis. Furthermore Examiners are directed to continue to use the Mayo Alice framework (as laid out in MPEP 2106 which incorporates Steps 2A and Step 2B of the 2019 PEG) as guidance in evaluating subject matter eligibility, which the Examiner has properly applied.
Applicant argues #2:
Step 2A - Prong 2
Notwithstanding the above, the Applicant notes that the claims as a whole integrate any purported judicial exception into a practical application. Rather than a simple process of a purported commercial or legal interaction as suggested by the Office Action, representative claim 51 involves: storing an identifier provisioned at an administrator system at a mobile device and subsequently encoding the identifier in a discretionary or hidden field of a payment protocol transaction request data set communication to enable the mobile device to trigger one or more further electronic transactions to be executed via the administrator system.
As would be understood by the skilled person and having regard to the specification, in some situations, the claimed features enable a mobile device to communicate only with administrator system to trigger one or more additional electronic transactions with potentially multiple additional payment systems using traditional payment protocols such as MasterCard, Visa or Interac payment protocols and without necessarily requiring a merchant point-of-sale device to install additional software or have alternative configurations to handle a different payment system, without the merchant system having any knowledge of the underlying additional payment systems, and without requiring the merchant device or the customer device to handle potentially multiple communications and electronic transactions with multiple external systems.
This is a very specific data privacy and practical improvement to the electronic processing system which clearly integrates any purported filtering process into a practical computer process.
According to the Memorandum regarding Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. 101 dated August 4, 2025 (the "Memorandum"), the analysis under Prong 2 of Step 2A takes into consideration all the claim limitations and how these limitations interact and impact each other when evaluating whether the approach is integrated into a practical application. The Memorandum further states that an important consideration in determining whether a claim improves technology or a technical field is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome.
The combination of claimed features are not insignificant extra-solution activity, rather these steps reflect the improvement described in the application.
For at least these reasons, the claims are patent eligible and comply with 35 USC 101 under the analyses of both Prong 1 and Prong 2.
Examiners response:
The Examiner respectfully disagrees, the memory of the mobile device and discretionary field are describing tools being used for implementing the abstract idea and limits the idea to the mobile environment. As per, MPEP 2106.05(f) Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone);. Additionally, MPEP 2106.05(d) shows that Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); is WURC, which applies to the instant application because as oppose to the merchant systems having software to perform some of the functions, the system is sending the required data over the network for another computer system to perform the abstract functions (i.e. using an intermediary), hence there is no improvement.
Applicant argues #3:
Step 2B
The Office Action also suggests that the previous claims amounted to mere instructions to apply a purported exception to generic computer components. The Applicant respectfully notes that the currently presented claims have been amended without prejudice to explicitly reference the use of specific discretionary or hidden fields in a payment protocol and the provisioning of an identifier at an administrator system which are specific technical steps which enable at least some of the technical improvements mentioned above.
Accordingly, the Applicant submits that the claims additionally recite significantly more than any commercial or legal interaction.
For at least the reasons above, claims 36-65 are patent eligible under Step 2A - Prongs 1 and 2, and Step 2B.
Examiners response:
The Examiner respectfully disagrees, the memory of the mobile device and discretionary field are describing tools being used for implementing the abstract idea and limits the idea to the mobile environment. As per, MPEP 2106.05(f) Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone);. Additionally, MPEP 2106.05(d) shows that Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); is WURC, which applies to the instant application because as oppose to the merchant systems having software to perform some of the functions, the system sending the required data over the network for another computer system to perform the abstract functions (i.e. using an intermediary), hence there is no improvement.
For the reasons stated above, the 101 arguments are not persuasive.
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 36-65 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more, and fails step 2 of the analysis because the focus of the claims is not on the devices themselves or a practical application but rather directed towards an abstract idea, the analysis is provided below.
Step 1 (Statutory Categories) - The claims pass step 1 of the subject matter eligibility test (see MPEP 2106(III)) as the claims are directed towards a mobile device and method.
Step 2A – Prong One (Do the claims recite an abstract idea?) - The idea is recited in the claims, in part, by:
storing at least one secure payment token comprising data representing an authorized payment amount and a financial service provider associated with the authorized payment amount; and a payment account preference identifier; the payment account preference identifier provisioned at a first financial account administrator to associate the payment account preference identifier with a plurality of preferred payment accounts associated with the purchaser; and
solicit user input for payment options of the pending transaction;
in response to receiving the user input for the payment options of the pending transaction, retrieve the at least one secure payment token and the payment account preference identifier;
generating a transaction request data set comprising data fields defined by a payment protocol and representing at least: a transaction identifier corresponding to a pending transaction with a merchant system; a total transaction amount; and the payment account preference identifier and the at least one secure payment token stored in the tamper-resistant secure element, the payment account preference identifier stored in at least one discretionary or hidden field in the payment protocol; and
transmitting the transaction request data set to the first financial account administrator associated with the financial service provider, wherein upon receipt, the on at least one payment account preference identifier from the transaction request data set enables the first financial account administrator to identify at least two preferred transaction payment funding source accounts to be applied toward satisfaction of the total transaction amount; and
receive, from the first financial account administrator system, a set of completed transactions, each completed transaction including transaction payment preference suggestion data set comprising data representing a notification of at least one benefit associated with association of at least one of the transaction payment preference suggestion funding source accounts with the payment account preference identifier.
The steps recited under Step 2A Prong 1 of the analysis under the broadest reasonable interpretation covers commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations) but for the recitation of generic computer components. That is other than reciting a mobile device, at least one processor, at least one persistent memory comprising a tamper-resistant secure element, a display screen to display a graphic user interface, and at least one processor of a financial account administrator system nothing in the claim elements are directed towards anything other than commercial or legal interactions. If a claim limitation, under its broadest reasonable interpretation, covers commercial or legal interactions, then it falls within the “Certain Methods of Organizing Human Activities” groupings of abstract ideas. Accordingly, the claims recite an abstract idea.
Step 2A – Prong Two (Does the claim recite additional elements that integrate the judicial exception into a practical application?) - This judicial exception is not integrated into a practical application. In particular, the claims only recite the additional elements of a mobile device, at least one processor, at least one persistent memory comprising a tamper-resistant secure element, a display screen to display a graphic user interface, and at least one processor of a financial account administrator system. The mobile device, at least one processor, at least one persistent memory comprising a tamper-resistant secure element, display screen to display a graphic user interface, and at least one processor of a financial account administrator system are recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components and limits the judicial exception to the particular environment of mobile computers. Mere instructions to apply the judicial exception using generic computer components and limiting the judicial exception to a particular environment are not indicative of a practical application (see MPEP 20106.05(f) and MPEP 20106.05(h)). Accordingly, 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. The claims are directed towards an abstract idea.
Step 2B (Does the claim recite additional elements that amount to significantly more than the judicial exception?) - The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above, with respect to integration of the abstract idea into a practical application, using the additional elements of the mobile device, at least one processor, at least one persistent memory comprising a tamper-resistant secure element, display screen to display a graphic user interface, and at least one processor of a financial account administrator system to perform the steps recite under Step 2A Prong One of the analysis amounts to no more than mere instructions to apply the exception using generic computer components and limits the idea to the mobile computing environment. Mere instructions to apply an exception using generic computer components and limiting the exception to a particular environment does not provide an inventive concept (see MPEP 20106.05(f) and MPEP 20106.05(h)). The additional elements have been considered separately, and as an ordered combination, and do not add significantly more (also known as an “inventive concept”) to the judicial exception. Further, MPEP 2106.05(d)(ii) provides that receiving and transmitting data over a network (see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network), and Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log); are well-understood routine and conventional, similar to the instant application claims which recites and sending and receiving data over network, and storing and retrieving information from the secure element to generate and send transaction request data. Further, the displaying step falls to transform the claims into patent eligible material, as this is part of the field of use and technical environment in which the abstract idea is being implement and does not result in an improvement to additional elements (see MPEP 2106.05(h) Electric Power Group court decision). The claims are not patent eligible.
The dependent claims have been given the full analysis including analyzing the additional limitations both individually and in combination as a whole. For instance, in light of the claim interpretation, claims 37-43, and 48 do not carry patentable-weight and therefor do not amount to significantly more than abstract idea since they further limiting limitations reciting the intended use/field of use of the payment account preference identifier performed by the financial account administrator. Claims 44-47, and 49-50 further define abstract ideas being limited to the mobile environment for performing commercial and legal interactions for processing the transaction, and are all steps that fall within the “Certain Methods of Organizing Human Activities” groupings of abstract ideas. The Dependent claims when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. 101 for the same reasoning as above and the additional recited limitations fail to establish that the claims are not directed to an abstract idea. The additional limitations of the dependent claims when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY S CUNNINGHAM II whose telephone number is (313)446-6564. The examiner can normally be reached Mon-Fri 8:30am-4pm.
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GREGORY S. CUNNINGHAM II
Primary Examiner
Art Unit 3694
/GREGORY S CUNNINGHAM II/ Primary Examiner, Art Unit 3694