DETAILED ACTION
The following NON-FINAL Office action is in response to Request for Continued Examination (RCE) filed on December 4, 2025 for application 17010784.
Acknowledgements
Claims 3, 7-8, 15-16 and 18-20 are canceled.
Claims 22-25 have been added.
Claims 1-2, 4-6, 9-14, 17 and 21-25 are pending.
Claims 1-2, 4-6, 9-14, 17 and 21-25 have been examined.
Notice of Pre-AIA or AIA Status
The present application, filed on or after December 13, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Section 35 USC 101 Arguments
In response to the Applicant's arguments under 35 USC 101, Applicant argues that claims 1-2, 4-6, 9-14, 17 and 21-25, as now amended, are not directed to an abstract idea or fall within the groupings or subgroupings identified by the Examiner since the amended claims recite limitations for securely performing an offline payment transaction between devices (e.g., a merchant device and a user device) while a connection with a network is not established by both devices. Applicant argues that the claimed inventions are directed to provide a "a technological solution to validate the offline payment transaction when both devices of the merchant and the user are not connected to the network. Applicant argued that each of the limitations of Claim 1 such as "establishing…communication ... with a user ...." and "receiving, by the merchant device from the user device, an electronic token generated by a token vault system and encrypted by the user device, wherein the electronic token has a validity of a first threshold time period from generation of the electronic token, and wherein the electronic token comprises: an identifier for a payment account of a user; an offline balance amount associated with the payment account; a digital certificate representing authentication of the offline balance amount, wherein the offline balance amount is a usable amount of a current balance for the offline payment transaction" does not fall within the subgrouping of "fundamental economic principles or practices (including hedging, insurance, mitigating risk)". Next, Applicant further argues that the limitation "verifying, by the merchant device, the electronic token using a decryption key available with the merchant device, the decryption key having a validity of a second threshold time period from generation of the decryption key, wherein verifying, by the merchant device, the electronic token comprises: decrypting the electronic token using the decryption key if the decryption key is valid; and verifying the decrypted electronic token" does not fall under the grouping of "mathematical concepts". Additionally, Applicant argues that using (a communication channel, an electronic token, a token vault system, decryption key, verifying the electronic token, and updating the decrypted electronic token based on the updated offline balance amount while the connection with the network is not established) is clearly the application of and/or the use of any alleged abstract idea of the claims in a meaningful way beyond the generally linking to a particular technological environment. Thus, Applicant submits that the limitations of amended independent claims 1 and 10 are recited in sufficient detail such that they are much more than implementing an abstract idea by adding the words "apply it" or an equivalent.
After careful review and reconsideration, Examiner respectfully disagrees with the arguments as the currently amended claims were analyzed to be reciting an abstract idea of conducting and validating transactions while in an offline state. Examiner continues to place the specific limitations (1)“ establishing communication with a user; receiving by the merchant from the user an identifier for a payment account of a user, an offline balance amount associated with the payment account of a user and a certificate representing authentication of the offline balance amount; verifying by the merchant, executing by the merchant the offline payment transaction based on successful verification without establishing connection; wherein executing by the merchant, the offline payment transaction comprises updating the offline balance amount while the connection with the network is not established; updating by the merchant based on the updated offline balance amount while the connection with the network is not established; and providing by the merchant the updated electronic token to the user” within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test, specifically classified under “fundamental economic principles or practices”, specifically “mitigating risk” as part of a transaction because the following limitations are simply an exchange between a buyer and a merchant securely facilitating a payment transaction when both the merchant and the buyer/user are not connected or offline. The payment transaction that is being conducted between two parties is a fundamental economic practice and a buyer and merchant are able to conduct a transaction when network connectivity isn’t available, hence, in order to conduct a secure off-line transaction, merchant has to validate the offline payment transaction and based on successful verification, updating the balance before sending the updated balance to the user. Also, the limitation “wherein the updated electronic token is configured to be exchanged with a new electronic token generated by the token vault system when the user device is connected to the network” does little to overcome the step 2A of the Alice/Mayo test as the claimed limitation actually describes the intended use of the updated electronic token as the updated electronic token hasn’t been generated and according to the MPEP (2103 I C, 2114 IV) such language does not have patentable weight. Examiner suggests to the Applicant that in order for the claimed limitation to get patentable weight, Applicant will have to claim the token vault system and recite the limitation as active steps. Also, even though the amended Claims 1 and 10 now recite a multi-step verification of the electronic token and describing time-bound tokens, local cryptographic validation without reliance on a network connection and updating the offline balance, the specific steps are still simply repeating “decrypting the electronic token and verifying the decrypted electronic token; verifying the decrypted token” is still being grouped within the “Mathematical Concepts” specifically “mathematical calculations” because since an electronic token is being decrypted and is being verified using mathematical operations to manipulate data and a second verification is also conducted using a certificate included in the token. The process of decryption is entirely conventional and these limitations comprise using mathematical operations to manipulate data, which is an abstract idea. The usage of time-bound tokens, cryptographic validation and updating balances are still combining abstract concepts to execute a verification process that is conventional and is still being considered contributing to the abstract idea.
Also, Examiner respectfully disagrees that the amended claims integrate the judicial exception into a specific, practical application that improves the reliability, security, and functionality of digital payment systems by enabling verified offline transactions using time-bound tokens and local cryptographic validation without reliance on a network connection and recites a structured and technical verification operation that governs whether a transaction may proceed based on specific constraints applied to both a decryption key and the token itself. The judicial exception is still not integrated into a practical application because the additional elements of the claims such as the use of a communication channel, merchant device, user device, token vault system, electronic token, decryption key and payment network are used as tools to perform an abstract idea and does not render the claim patent eligible because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. Examiner believes that there is not a technical improvement to the technology itself. The recited technology is simply being used to implement a multi-verification process incorporating different abstract concepts such as enabling verified offline transactions using time-bound tokens and local cryptographic validation. Therefore, the claims do not, for example, purport to improve the functioning of a computer nor do they effect an improvement in any other technology or technical field. Hence, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
Also, the added dependent claims further describe the abstract idea by performing the cryptographic verification of the decrypted token using the certificate included in the token. Also, claims 23 and 24 recite actions performed by the token vault system. Examiner suggests to the Applicant that in order for the claimed limitations to get patentable weight, Applicant will have to claim the token vault system and recite the limitations as active steps
In response to the amendments, the rejection under 35 USC 103 has been withdrawn.
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 1-2, 4-17 and 21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-2, 4-9 and 21 are directed to a method and claims 10-17 are directed to a system. Therefore, these claims fall within the four statutory categories of invention.
The claims recite conducting and validating transactions while in an offline state which is an abstract idea. Specifically, the claim recites (1)“establishing communication with a user; receiving by the merchant from the user an identifier for a payment account of a user, an offline balance amount associated with the payment account of a user and a certificate representing authentication of the offline balance amount; verifying by the merchant, executing by the merchant the offline payment transaction based on successful verification without establishing connection; wherein executing by the merchant, the offline payment transaction comprises updating the offline balance amount while the connection with the network is not established; updating by the merchant based on the updated offline balance amount while the connection with the network is not established; and providing by the merchant the updated electronic token to the user” which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test, classified under “fundamental economic principles or practices”, specifically “mitigating risk” as part of a transaction. (2) Also, the limitations “decrypting the electronic token and verifying the decrypted electronic token” are grouped within the “Mathematical Concepts” specifically “mathematical calculations” (See MPEP 2106, specifically 2106.04(a)) because – for example, in the (1)first case, the claims involve a series of steps for facilitating a payment transaction between a buyer and seller when both the merchant and the user are not connected and in the (2)second case, an electronic token is decrypted, verified using mathematical operations to manipulate data and a second verification is also conducted using a certificate included in the token. Accordingly, the claim recites an abstract idea (See MPEP 2106, specifically 2106.04(a)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(d)), the additional elements of the claim such as the use of a communication channel, merchant device, user device, token vault system, electronic token, decryption key and a network merely involves using a computer as a tool to perform an abstract idea and/or generally links the use of a judicial exception to a particular technological environment. The use of a communication channel, merchant device, user device, token vault system, electronic token, decryption key and a network to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not render the claim patent eligible because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. Specifically, the communication channel, merchant device, user device, token vault system, electronic token, decryption key and a network perform the steps or functions of Claim 1. The additional claim elements are not indicative of integration into a practical application, because the claims do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106, specifically 2106.05), the additional elements of a communication channel, merchant device, user device, token vault system, electronic token, decryption key and a network, to perform the steps amounts to no more than using of communication channel, merchant device, user device, token vault system, electronic token, decryption key and a network to automate and/or implement the abstract idea of conducting and validating transactions while in an offline state. As discussed above, taking the claim elements separately, the communication channel, merchant device, user device, token vault system, electronic token, decryption key and a network perform the steps/limitations of Claim 1. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of conducting and validating transactions while in an offline state. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a server system comprising a processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims define the detailed steps of executing an offline payment transaction such as receiving a payment amount and conducting computations with the payment amount and offline balance amount further describing the abstract idea of validating transactions while in an offline state. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Gentry (US 7,657,748 B2) discloses the decryption key having a validity of a second threshold time period from generation of the decryption key (Col. 4 lines 53-54, Col. 11 lines 24-30, Col. 22 lines 36-40).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZEHRA RAZA whose telephone number is (571)272-8128. The examiner can normally be reached 10AM-6:30PM.
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/ZEHRA RAZA/Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697