DETAILED ACTION
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 amendment filed on 03/30/2026.
Claims 1-35 have been canceled.
Claims 36-65 are currently pending and have been examined.
Response to Arguments
Applicant's arguments filed 03/20/2026 with respect to the 101 rejection have been fully considered but they are not persuasive.
Applicant argues #1:
…independent claims 36 and 51 have been amended without prejudice to more clearly recite features which are not judicial exceptions, which integrate a practical application or amount to significantly more than any purported judicial exception…
Step 2A - Prong 1
The Office Action suggests that the previous claims "cover 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 facilitates a multicast electronic data process which is initiated over an electronic transaction network configured for unicast transactions. This can enable more complex data processing activities with different end systems over different transaction networks without requiring any change to existing computer hardware, software, or transaction networks at legacy merchant locations or financial institution systems.
The specific combination of technical steps and communication involving the specific use of identifiers or pseudo numbers in the data fields for the unicast electronic transaction network 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, the use of identifiers or pseudo numbers in the data fields for the unicast electronic transaction and sending the data over to a electronic transaction network is not indicative of a technical improvement as this akin to sending and receiving data over a network and performing record keeping task which the Courts have shown to be insufficient to amount to significantly more than the abstract idea, see e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 219-20, 110 USPQ2d 1981-82 (2014) (describing the concept of intermediated settlement), Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); 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). 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, Step 2B
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: generating a transaction request data set in compliance with a payment protocol for a unicast electronic transaction network which, through the use of pseudo numbers or hidden fields facilitate the initiation of a multicast transaction without violating the payment protocol of the unicast transaction network.
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 initiate a multicast electronic transaction which splits the original transaction into portions and involves potentially separate tokens over a hardware and software network not configured to process multicast transactions. This enables backward compatibility with traditional 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.
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 a specific combination of features which as a whole go beyond use of a mere technological environment but rather address specific technical challenges in the functioning of the system and traditional unicast transaction networks.
The system also provides improved data privacy and security as the underlying unicast payment network and the merchant devices can be completely unaware of the customer's end payment mechanisms, and the payment tokens for the additional transaction networks never have to cross the merchant device or the initiating unicast network. These improvements are provided by all of the specifically claimed combination of features which considered as a whole go beyond use of a mere technological environment, do not seek to monopolize any purported exception, and amount to more than WURC activity.
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, as discussed above, the use of identifiers or pseudo numbers in the data fields for the unicast electronic transaction and sending the data to an electronic transaction network is not indicative of a technical improvement as this akin to sending and receiving data over a network and performing record keeping task which the Courts have shown to be insufficient to amount to significantly more than the abstract idea, see e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 219-20, 110 USPQ2d 1981-82 (2014) (describing the concept of intermediated settlement), Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); 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). 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 use of identifiers or pseudo numbers in the data fields for the unicast electronic transaction and sending the data is not indicative of a technical improvement as this akin to sending and receiving data over a network and performing record keeping task which the Courts have shown to be insufficient to amount to significantly more than the abstract idea, see, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 219-20, 110 USPQ2d 1981-82 (2014) (describing the concept of intermediated settlement), Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); 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). Additionally, 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 § 112
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 36-65 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. Claims 36 and 51 have been amended to recite “…for facilitating a multicast electronic transaction over an electronic transaction network configured for unicast transactions… “, “…comprising data fields defined by a payment protocol for the electronic transaction network configured for unicast transaction”, “…such that the electronic transaction network configured for unicast transactions is unaware or agnostic that the transaction request data set is for a multicast transaction; transmit the transaction request data set, over the electronic transaction network configured for unicast transactions”. The Examiner fails to find support in the specification for particularly unicast transactions and multicast transactions, as there is no mention or description in the specification of unicast transactions or multicast transactions that would convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention. Therefor these limitations are rejected as new matter.
Claims 37-50, and 52-65 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, by virtue of being dependent on claims 36 and 51, respectively.
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 for the electronic transaction network configured for unicast transactions 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 where the payment account preference identifier is a pseudo card number or is stored in at least one discretionary or hidden field in the payment protocol such that the electronic transaction network configured for unicast transactions is unaware or agnostic that the transaction request data set is for a multicast transaction; 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 authenticates and enables the first financial account administrator to utilize at least one payment token stored at the first financial account administrator system to generate at least two transaction request portion data sets to transmit over at least one additional electronic transaction network to execute transaction portions with at least two respective 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 corresponding to the at least two transaction request portions data sets transmitted over the at least one additional electronic transaction network, 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, an electronic transaction network, 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, an electronic transaction network, 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, an electronic transaction network, 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, electronic transaction network, 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 needed+ for processing the transaction. 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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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
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