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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/04/25 has been entered.
Claim Rejections - 35 USC §101
1. 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.
2. Claims 21-30, 32-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Subject Matter Eligibility Standard
3. The examiner contends that, under the judicial exceptions enumerated in the MPEP § 2106, to determine the patent-eligibility of an application, a two- part analysis has to be conducted.
Part 1: it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. See MPEP 2106.03.
Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include:
1. Certain method of organizing human activity such as Fundamental Economic Practices, Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or Interactions Between People.
2. A mental process.
3. Mathematical relationships/formulas.
Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a practical application.
Part 2B: determine if the claim provides an inventive concept.
Analysis
4. Under Step 1 of the analysis, it is found that the claim indeed recites a series of steps and therefore, is a process - one of the statutory categories.
Under Step 2A (Prong 1), using claim 21 as the representative claim, it is determined that apart from generic hardware and extra-solution activity discussed in Step 2A, Prong 2 below, the claim as a whole recites a method of organizing human activity. For instance, the claim language “preserve…the most recent data operation from the one or more data operations; retrieve…the most recent data operation from the state machine; resume…the transaction at a step following the most recent data operation from the retrieved one or more data operations…; complete the transaction based at least in part on the one or more data operations…” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), the examiner contends that the claim recites a combination of additional elements including “record one or more data operations performed by the client device, the client device including a display, a memory and processor” These additional elements, considered in the context of claim 1 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of processing and storing data using a generic computer system. In other words, these additional limitations are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the client device, a memory and processor are caused to perform these steps. The client device, a memory and processor, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the additional limitation can be reasonably characterized as reciting a patent-ineligible insignificant extra-solution activity. For instance, the steps of “record one or more data operations performed by the client device,” when considered as a whole, is a mere data gathering step considered to be insignificant extra-solution activity. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Further, wherein the processor is further configured to display…a communication status of the client device prior to authorizing the transaction” is recited to further narrow the scope of the abstract idea. Thus, it is determined that claim 21 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Under Step 2B, it is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 1 are the generically recited “client device; a memory and processor.” The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional hardware components or systems being used in their ordinary manner. The specification substantiates this, for instance at paras 00028-00302. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The examiner contends that the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981).” A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.” Specifically, an improvement to an abstract idea cannot be a basis for determining that the claim recites significantly more than an abstract idea. Furthermore, relying on a “processor” to “perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OJP Techs., Inc. v. Amazon.com, Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes that the claim does not recite additional elements that amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. Note: The analysis above applies to all statutory categories of invention. As such, the independent claims otherwise styled as a computer-readable medium encoded to perform specific tasks, machine or manufacture, for example, would be subject to the same analysis. Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 21 and are rejected using the same rationale as in claim 21 above. More specifically, dependent claims 23-30, 33-36, 39-40 do not recite additional elements but merely further narrow the scope of the abstract idea. However, dependent claims 22, 37 recites additional elements, but these additional elements comprise the analyses of data, which is nothing but the automation of mental tasks. See Benson, Bancorp and Cyberphone. Also see Electric Power, 830 F.3d at 1354 (“[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes”).
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.
Claim(s) 21-30, 32-40 are rejected under 35 U.S.C. 103 as being unpatentable over Hammad et al (Fine et al, Fine hereinafter, US PAT: 2016/0142174) in view of Takeuchi (US PUB: 2017/0083728).
Re claim 21. Fine discloses a transaction authorization system, comprising: a processor; and a memory containing a state machine, wherein, after initiation of a transaction involving a client device and a transmitting device a contactless card, the processor is configured to engage the state machine to (see fig.3, paras 0005, 0043, 0073): record one or more data operations performed by the client device (see paras 0050, 0060,0088), the client device including a display, preserve, upon a disruption of transaction communication between the client device and the transmitting device contactless card, the most recent data operation from the one or more data operations (see paras 0010, 0109), retrieve, upon a resumption of the transaction communication between the client device and the transmitting device contactless card (see paras 0056, 0061), complete the transaction based at least in part on the one or more data operations performed by the client device (see paras 0099-0100). Fine does not explicitly disclose the most recent data operation from the state machine, resume, upon the resumption of the transaction communication, the transaction at a step following the most recent data operation from the retrieved one or more data operations performed by the client device, and wherein the processor is further configured to display, via a user interface of the client device in data communication with the processor, a communication status of the client device prior to authorizing the transaction. Takeuchi makes this disclosure (see paras 0010, 0094, 0147, 0152-0154, 0162-0164 and figs.2, 8, 10). It would have been obvious to one of ordinary skill in the art to include in the mobile device and communications of Fine, the NFC communications aspects of Takeuchi since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Both relate to communication devices, device interactions and communications operations, with the motivation being to enhance processing instructions within NFC communications. (see Takeuchi "[0003], [0010] - [0012]).
Re claim 22. Fine discloses the transaction authorization system of claim 21, wherein the processor is further configured to display, via the user interface, a prompt identifying an
occurrence of the disruption and an indication of a read status of the client device prior
to displaying the prompt (see fig.5 element 505, see the abstract, see paras 0086-0087).
Re claim 23. Fine discloses the transaction authorization system of claim 22,
wherein the disruption comprises an exit of a contactless card from a communication
field generated by the client device (see para 0080).
Re claim 24. Fine discloses the transaction authorization system of claim 23, wherein
the disruption is resolved when the contactless card re-enters the communication
field (see paras 0069).
Re claim 25. Fine discloses the transaction authorization system of claim 22,
wherein the disruption comprises signal interference (see the abstract).
Re claim 26. Fine discloses the transaction authorization system of claim 22,
wherein the disruption comprises at least one disruption selected from a group of signal
blocking and signal jamming (see paras 0081-0082).
Re claim 27. Fine does not explicitly disclose the transaction authorization system of claim 21,
wherein the state machine is configured to resume the transaction a predetermined
number of times prior to display, via the user interface, of a failure message. Takeuchi makes this disclosure (see paras 0010, 0094, 0147, 0152-0154, 0162-0164 and figs.2, 8, 10). It would have been obvious to one of ordinary skill in the art to include in the mobile device and communications of Fine, the NFC communications aspects of Takeuchi since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Both relate to communication devices, device interactions and communications operations, with the motivation being to enhance processing instructions within NFC communications. (see Takeuchi "[0003], [0010] - [0012]).
Re claim 28. Fine discloses the transaction authorization system of claim 27,
wherein the failure message comprises a prompt for a user to take an action (see the abstract).
Re claim 29. Fine discloses the transaction authorization system of claim 28,
wherein the action comprises positioning the contactless card within the communication
field (see the abstract).
Re claim 30. Fine does not explicitly disclose the transaction authorization system of claim 29,
wherein the state machine is configured to resume the transaction after the contactless
card is positioned within the communication field. Takeuchi makes this disclosure (see paras 0010, 0094, 0147, 0152-0154, 0162-0164 and figs.2, 8, 10). It would have been obvious to one of ordinary skill in the art to include in the mobile device and communications of Fine, the NFC communications aspects of Takeuchi since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Both relate to communication devices, device interactions and communications operations, with the motivation being to enhance processing instructions within NFC communications (see Takeuchi "[0003], [0010] - [0012]).
Re claim 32. Claim 32 recites similar limitations to claim 21 and thus rejected using the same art and rationale as in claim 21, above.
Re claim 33. Claim 33 recites similar limitations to claim 23 and thus rejected using the same art and rationale as in claim 23, above.
Re claim 34. Fine discloses the transaction authorization method of claim 32,
wherein the disruption comprises a blockage inhibiting communication by a contactless
card and the client device (see paras 0081-0082).
Re claim 35. Fine discloses the transaction authorization method of claim 32,
wherein: the one or more data operations comprise data reads performed by the client
device, and the state machine continually records data reads performed by the client device in
connection with the transaction (see paras 0050, 0060,0088).
Re claim 36. Fine discloses the transaction authorization method of claim 35,
wherein: the one or more data operations further comprise data writes performed by the
client device, and the state machine further continually records data writes performed by the client device in connection with the transaction (see paras 0050, 0060,0088).
Re claim 37. Fine discloses the transaction authorization method of claim 32,
further comprising, prior to commencing the transaction, initiating, by the contactless
card, the transaction by via one or more gestures within the communication field (see paras 0029, 0043).
Re claim 37. Claim 37 recites similar limitations to claim 21 and thus rejected using the same art and rationale as in claim 21, above.
Re claim 39. Claim 39 recites similar limitations to claim 23 and thus rejected using the same art and rationale as in claim 23, above.
Re claim 40. Claim 40 recites similar limitations to claim 24 and thus rejected using the same art and rationale as in claim 24, above.
Response to Arguments
Applicant’s arguments with respect to claim(s) 21-30, 32-40 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm.
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/OJO O OYEBISI/Primary Examiner, Art Unit 3695