DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant filed a response dated December 19, 2025 in which claims 1, 8, and 15 have been amended. Therefore, claims 1-20 are currently pending in the application.
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. Because 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 19, 2025 has been entered.
Priority
Application 17/410,411 filed on August 24, 2021 is a CON of 15/954,460 filed on April 16, 2018 and PAT 11100500, which is a CON of 13/755,262 filed on January 31, 2013 and PAT 9947011, which claims benefit of 61/728,766 filed on November 20, 2012.
Examiner Request
The Applicant is requested to indicate where in the specification there is support for amendments to claims should Applicant amend. The purpose of this is to reduce potential 35 U.S.C. § 112(a) or § 112 1st paragraph issues that can arise when claims are amended without support in the specification. The Examiner thanks the Applicant in advance.
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 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. (MPEP 2106). The claims are directed to a method, system, and apparatus which is one of the statutory categories of invention (Step 1: YES). The recitation of the claimed invention is analyzed as follows, in which the abstract elements are boldfaced.
Claim 1 recites the limitations of:
A computer system comprising: a non-transitory memory storing instructions; and a processor configured to execute instructions to cause the computer system to: receive, via a payment gateway of the computer system, a request from an application executing on a first computing device associated with a user using a software library of the application provided by a service provider associated with the computer system, wherein the request comprises encrypted data for a payment funding source of the user encrypted by the software library using an encryption process associated with the payment gateway when payment instrument data for the payment funding source is input to the application;
decrypt, by the computer system, the encrypted data to obtain the payment instrument data for the payment funding source based on the encryption process used by the software library to encrypt the encrypted data;
register, by the computer system, the payment funding source to the user based on the payment instrument data, wherein the registering includes verifying that the user is authorized to use the payment funding source;
generate, by the computer system based on the request, a token that corresponds to a payment funding source registered to the user, wherein the token does not include an underlying identifying primary account number corresponding to a payment funding source for that token;
transmit, by the computer system, via the payment gateway, the token to the first computing device;
generate, by the computer system, at the payment gateway and based on the token, a temporary token that prevents the payment funding source from being obtained using the token;
transmit, by the computer system, via the payment gateway, the temporary token to the first computing device;
receive, by the computer system via the payment gateway, the transaction and the temporary token used by a second computing device of a different entity to process the transaction;
prevent, by the computer system, access by the different entity to the underlying identifying primary account number corresponding to the payment funding source for the token;
process, by a processing engine of the computer system, the transaction using the temporary token;
provide, by the computer system via the payment gateway, a result on the second computing device using the software library and via the payment gateway, wherein the result is based on processing the transaction; and
update, by the processing engine of the computer system, a set of tokens associated with a plurality of payment funding sources of the user based on using the temporary token for the transaction.
The claim as a whole recites a method that, under its broadest reasonable interpretation, covers collecting, analyzing, and transmitting data for management of payment information to facilitate a financial transaction. This is a fundamental economic practice of a financial transaction; a commercial interaction, such as for business relations; and managing personal behavior or relationships or interactions between people, which are certain methods of organizing human activity.
Furthermore, the claims cover the use of a computer system for the management of payment information to facilitate a financial transaction. As the steps could be performed by a human without a computer, the claim limitations fall within the mental processes grouping, and the claim recites an abstract idea.
Finally, the claims also recite the use of an encryption process to encrypt or decrypt payment instrument data. This is a mathematical concept.
In the alternative, the encryption process is considered a technology that is recited at a high level of generality and merely applied as a tool to implement the abstract idea.
Thus, the claims recite an abstract idea. (Step 2A, prong 1: YES).
Moreover, the judicial exception is not integrated into a practical application. Other than reciting a “A computer system comprising: a non-transitory memory storing instructions; and a processor configured to execute instructions to cause the computer system to:”, “a payment gateway of the computer system”, “an application executing on a first computing device”, “a software library of the application provided by a service provider associated with the computer system”, “an encryption process associated with the payment gateway”, “first computing device”, “second computing device”, and “a processing engine of the computer system”, to perform the steps of “decrypting”, “registering”, “generating”, “preventing”, “processing”, “providing”, and “updating”, nothing in the claim elements preclude the steps from practically being a certain method for organizing human activity. The claim as a whole does not integrate the exception into a practical application. The claim merely describes how to generally “apply” the concept of collecting, analyzing, and transmitting data for management of payment information to facilitate a financial transaction in a computer environment. The additional computer elements recited in the claim limitations are recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception utilizing generic computer components.
For example, the Specification discloses “[00038] FIG. I is a block diagram of an example system I00 for enabling electronic transactions on a mobile device I02. The mobile device I02, in some examples, may be a smart phone, personal digital assistant (PDA), tablet computer, or other personal electronic device capable of the installation and execution of a software application designed to enable a user to purchase goods and/or services from a retailer through electronic transactions. Rather than a mobile device, in some implementations, the device I02 may be a desktop computer, laptop computer, Smart TV, Internet appliance, or other computing device capable of the installation and execution of a software application designed to enable a user to purchase goods and/or services from a retailer through electronic transactions.”
Additionally, the Specification discloses “[00076] The payment gateway 506, in some implementations, forwards payment instrument data for processing (522) with the payment instrument processing server 508. For example, the payment gateway 506 may decrypt the payment instrument data previously encrypted by the payment software library portion of the entity application 502. The payment software library portion of the entity application 502, for example, may encrypt the payment instrument data using an encryption algorithm provided by the payment gateway 506.”
Thus, the specification supports that general purpose computers or computer components are utilized to implement the steps of the abstract idea.
Merely implementing the abstract idea on a generic computer is not a practical application of the abstract idea. The claim as a whole, in viewing the additional elements both individually and in combination, does not integrate the judicial exception into a practical application. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. (Step 2A prong two: No)
The claim does not include additional elements, when considered both individually and as an ordered combination, that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using “A computer system comprising: a non-transitory memory storing instructions; and a processor configured to execute instructions to cause the computer system to:”, “a payment gateway of the computer system”, “an application executing on a first computing device”, “a software library of the application provided by a service provider associated with the computer system”, “an encryption process associated with the payment gateway”, “first computing device”, “second computing device”, and “a processing engine of the computer system”, to perform the steps of “decrypting”, “registering”, “generating”, “preventing”, “processing”, “providing”, and “updating”, amounts to no more than mere instructions to apply the exception using generic computer component. The claim merely describes how to generally “apply” the concept of collecting, analyzing, and transmitting data for management of payment information to facilitate a financial transaction in a computer environment. Thus, even when viewed as a whole, nothing in the claim adds significantly more (i.e. an inventive concept) to the abstract idea. Such additional elements are determined to not contain an inventive concept according to MPEP 2106.05(f). It should be noted that (1) the “recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not provide significantly more because this type of recitation is equivalent to the words “apply it”, and (2) “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, commercial interaction, or managing personal behavior or relationships or interactions between people, mental process, or mathematical calculation) does not integrate a judicial exception into a practical application or provide significantly more”.
Dependent claims 2-7, 9-14, and 16-20 merely limit the abstract idea and do not recite any further additional elements beyond the cited abstract idea and the elements addressed above, thus, they do not amount to significantly more. The dependent claims are abstract for the reasons presented above because there are no additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Thus, the dependent claims are directed to an abstract idea. (Step 2B: No)
Claims 8 and 15 are substantially similar to claim 1, thus, they are rejected on similar grounds.
Claim 15 recites that additional elements of “A non-transitory machine-readable medium having stored thereon machine-readable instructions executable to cause a machine to perform operations comprising:”.
Claim 13 is substantially similar to claim 4, thus, it is rejected on similar grounds.
Claims 11 and 20 are substantially similar to claim 7, thus, they are rejected on similar grounds.
Additionally, claim 4 recites the additional elements of “third computing device” and claim 7 recites a “user interface”.
For similar reasons as explained above with regard to claim 1, under Step 2A, prong two, these additional elements are merely applying generic computer components to implement the abstract idea. Under Step 2B, when viewing the additional elements individually and in combination, the additional elements do not amount to an inventive concept amounting to significantly more than the judicial exception itself as the claimed computer-related technologies are mere tools for implementing the abstract idea as explained with regard to claim 1.
Therefore, claims 1-20 are not patent-eligible.
Response to Arguments
Applicant’s arguments filed on December 19, 2025 have been fully considered but are not persuasive for the following reasons:
With respect to Applicant’s arguments as to the § 101 rejections for now pending claims 1-20, Examiner notes the following:
Applicant argues that the amended features would integrate the abstract idea into a practical application, the examiner respectfully disagrees. In particular, the applicant argues that “The specification described the problem at paragraphs [0002]-[0008] of the present application where payment instrument information may be stored with online retailers for later use, but this required memorizing many different logins and passwords, and there is not mechanism to convey data securely between online retailers. To address the problem, the limitations recited in the claims utilize a computer system having a payment gateway and processing engine to facilitate tokenization of data in a secure manner, where temporary token may further issue from stored tokens, allowing for secure communication of data necessary for electronic transaction processing without revealing underlying sensitive financial data.”
Examiner notes that the stated problems of storing payment instrument information to avoid memorizing many different logins and passwords is not a technical problem, and the claimed solution of tokenizing data in a secure manner without revealing underlying sensitive financial data, is not a technical solution. In the claim, the solution of storing a tokenized version of data without revealing the underlying data is part of the abstract idea, as it is merely involves data storage, manipulation, and transmission. Furthermore, the obfuscation of data could be completed mentally or manually by paper or pen.
Furthermore, the additional elements of the computer system - a “A computer system comprising: a non-transitory memory storing instructions; and a processor configured to execute instructions to cause the computer system to:”, “a payment gateway of the computer system”, “an application executing on a first computing device”, “a software library of the application provided by a service provider associated with the computer system”, “an encryption process associated with the payment gateway”, “first computing device”, “second computing device”, and “a processing engine of the computer system”, to perform the steps of “decrypting”, “registering”, “generating”, “preventing”, “processing”, “providing”, and “updating”, in all steps is recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The claims at issue covers collecting, analyzing, and transmitting data for management of payment information to facilitate a financial transaction. The claims invoke the “A computer system comprising: a non-transitory memory storing instructions; and a processor configured to execute instructions to cause the computer system to:”, “a payment gateway of the computer system”, “an application executing on a first computing device”, “a software library of the application provided by a service provider associated with the computer system”, “an encryption process associated with the payment gateway”, “first computing device”, “second computing device”, and “a processing engine of the computer system”, to perform the steps of “decrypting”, “registering”, “generating”, “preventing”, “processing”, “providing”, and “updating” merely as tools to execute the abstract idea. 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 certain method of organizing human activity or mental process or mathematical calculation) does not integrate a judicial exception into a practical application. (MPEP 2106.05 (f))
Finally, the Applicant argues that the claims are directed to significantly more than the abstract idea.
Examiner disagrees, however, and notes that, as explained above in the instant rejection under 35 U.S.C. § 101, that the additional elements do not amount to an inventive concept. The additional elements of the computer system - “A computer system comprising: a non-transitory memory storing instructions; and a processor configured to execute instructions to cause the computer system to:”, “a payment gateway of the computer system”, “an application executing on a first computing device”, “a software library of the application provided by a service provider associated with the computer system”, “an encryption process associated with the payment gateway”, “first computing device”, “second computing device”, and “a processing engine of the computer system”, are merely generic computer components performing their well-known basic functions of collecting, analyzing, and transmitting data for management of payment information to facilitate a financial transaction. Per the specification, the recited computer elements and machine learning steps and model are described only at a high level of generality, (see Spec. at paras. [00038], [00076]). In view of the specification, the application of the computer elements and machine learning is merely being applied to the abstract idea.
The other limitations which are simply supporting the abstract idea correspond to insignificant extra-solution activity which do not transform the abstract idea into a patent eligible subject matter. Also, the functionality here is already present in the recited hardware, which is merely routine and conventional. Collecting, analyzing, and transmitting data is routine and conventional. There is no technological problem or solution identified. This is merely a business solution to transfer data between devices. (MPEP 2106.05 (f))
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and is available for review on Form PTO-892 Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MERRITT J HASBROUCK whose telephone number is (571)272-3109. The examiner can normally be reached M-F 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Tran can be reached on 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MERRITT J HASBROUCK/Examiner, Art Unit 3695
/CHRISTINE M Tran/Supervisory Patent Examiner, Art Unit 3695