DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Arguments
Applicant's arguments filed on 03/04/2026 have been fully considered but they are not persuasive.
With respect to U.S.C. 101 rejection, Applicant is of the opinion that claims are not directed to abstract idea. The newly added limitation integrate exception into a practical application because claim recites specific way of controlling transaction authorization in a computerized environment. Claims are like BASCOM v. AT&T. and DDR. However, Examiner respectfully disagrees.
The claims are directed to performing a transaction which is an abstract idea. The claims involve a series of steps of registering multiple information, receiving multiple information with transaction, approving the transaction based on multiple information corresponds to registered information, generating a pass code, transmitting the pass code and receiving back the pass code and transmitting authorization if transmitted pass code and received pass code are matches which is a process that deals with commercial or legal interactions. The additional elements of the claims such as, computer device, computer system, payee computer system, device interface, processor and memory, merely use a computer as a tool to perform an abstract idea. Specifically, computer device, computer system, payee computer system, device interface, processor and memory perform the steps of registering multiple information, receiving multiple information with transaction, approving the transaction based on multiple information corresponds to registered information, generating a pass code, transmitting the pass code and receiving back the pass code and transmitting authorization if transmitted pass code and received pass code are matches. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of performing transaction. 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 computer or 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.
Claims are not similar to BASCOM (BASCOM Global Internet Service inc. v. ATT&T Mobility LLC.), because BASCOM is clearly not applicable to the instant claims as in BASCOM, where the court determined that there was an ordered combination of conventional components that provided for filtering of internet content based on the location of a filtering component in a network. On the other hand, claims recite “registering multiple information, receiving multiple information with transaction, approving the transaction based on multiple information corresponds to registered information, generating a pass code, transmitting the pass code and receiving back the pass code and transmitting authorization if transmitted pass code and received pass code are matches” which is a process that deals with commercial or legal interactions.
Claims are not similar to DDR Holdings, In the case of DDR Holdings, the claim addresses the problem of retaining Web site visitors from being diverted from a host’s web site to an advertiser’s Web site, for which “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer network". Here, however, the instant claim is directed to abstract idea of performing a transaction. Unlike the situation in DDR Holdings, Applicant did not identify any problem particular to computer networks and/or the Internet that claim allegedly overcome.
With respect to U.S.C. 103 rejection, Applicant’s arguments 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.
Status of Claims
Claims 1, 3-9, 11-17 and 19-24 have been examined.
Claims 2, 10 and 18 have been canceled by the Applicant.
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, 3-9, 11-17 and 19-24 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.
In the instance case, claims 1, 3-8 are directed to a method, claims 9, 11-16 are directed to a non-transitory computer readable medium and claims 17, 19-24 are directed to a system. Therefore, these claims fall within the four statutory categories of invention.
The claims are directed to performing a transaction which is an abstract idea. Claims recite “storing… first user identification data…; storing… first account identification data…; receiving…second account identification data…; receiving….a second user identification data…; and approving….the transaction…; randomly generating…a pass code…; transmitting…the pass code…; receiving…the pass code…; transmitting…an authorization….when pass code received…matches the pass code transmitted…” 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 (MPEP 2106) because the claims involve a series of steps of registering multiple information, receiving multiple information with transaction, approving the transaction based on multiple information corresponds to registered information, generating a pass code, transmitting the pass code and receiving back the pass code and transmitting authorization if transmitted pass code and received pass code are matches which is a process that deals with commercial or legal interactions. Accordingly, the claims recite an abstract idea (See MPEP 2106.05).
Additionally, claims are directed to decision making by analyzing data which is an abstract idea and deals with mental process. Therefore, the claim is directed to an abstract idea, as it has been held that a combination of abstract ideas, in this case mental processes and certain methods of organizing human activity, is still an abstract idea. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016).
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), the additional elements of the claims such as, computer device, computer system, payee computer system, device interface, processor and memory, merely use a computer as a tool to perform an abstract idea. Specifically, computer device, computer system, payee computer system, device interface, processor and memory perform the steps of registering multiple information, receiving multiple information with transaction, approving the transaction based on multiple information corresponds to registered information, generating a pass code, transmitting the pass code and receiving back the pass code and transmitting authorization if transmitted pass code and received pass code are matches. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements 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 or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), 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), the additional elements of computer device, device interface, processor and memory, to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of performing a transaction. As discussed above, taking the claim elements separately, computer device, computer system, payee computer system, device interface, processor and memory perform the steps of registering multiple information, receiving multiple information with transaction, approving the transaction based on multiple information corresponds to registered information, generating a pass code, transmitting the pass code and receiving back the pass code and transmitting authorization if transmitted pass code and received pass code are matches. 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 performing transaction settlement. 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 computer or 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 3-8, 11-16 and 19-24 further describes the abstract idea of performing a transaction settlement. Specifically claims further describing the additional elements and data which is part of the abstract idea. The dependent claim does 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 claim is also not patent eligible.
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 1, 3-9, 11-17 and 19-24 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 1, 9, and 17 recite “approving by the first computer system, the transaction when the second user identification data corresponds to the first user identification data and second payment network account number corresponds to the first payment network account number” claims further recite “transmitting by the first computer system an authorization to the device interface when the pass code received from the device interface matches the pass code transmitted to the user” The specification does not disclose approving and transmitting authorization together in the single embodiment.
Specification discloses: Through the Internet 600 (block 2002), the consumer 100 further inputs into the computer system of the PPAITPN 500 some partial data shown on his official identification document (e.g., last four digits of the driver license number or passport number, expiration date of the driver license or passport, the first five digits of the zip code of the address shown on the driver license or passport, etc.), credit card, debit card, or prepaid card (e.g., last six digits of the card number, the security code, the expiration date of the card, the type of card, etc.), check (e.g., the last eight digits of the checking account number, etc.), and/or other financial instruments…(Paragraph 0174-192); Through the Internet 600 (block 2002), the consumer 100 further inputs into the computer system of the PPAITPN 500 some partial data shown on his official identification document (e.g., last four digits of the driver license number or passport number, expiration date of the driver license or passport, the first five digits of the zip code of the address shown on the driver license or passport, etc.), credit card, debit card, or prepaid card (e.g., last six digits of the card number, the security code, the expiration date of the card, the type of card, etc.), check (e.g., the last eight digits of the checking account number, etc.), and/or other financial instruments (See paragraph 0198-203) but does not disclose approving and transmitting authorization together in the single embodiment.
Claims 3-8, 11-16 and 19-24 are also rejected as each depends from claims 1, 9 and 17 respectively.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3-9, 11-17 and 19-24 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ganesan (US 6678664) in view of Roden (US 20100005076) and in further view of PHARRIS (US 20090254440).
With respect to claims 1, 9 and 17 Ganesan discloses:
storing, at a first computer system prior to a transaction, first user identification data provided by a user, the first user identification data being insufficient to recover an identity of the user (See column 5 lines 10-51 and column 6 lines 16-25)
storing, at the first computer system, a first account data (i.e. Social Security Number) associated with the first user identification data (See column 5 lines 10-51 and column 6 lines 16-25));
receiving, at the first computer system, from a payee computer system, a second account data associated with the transaction (See column 5 lines 10-51 and column 6 lines 16-25));
receiving at the first computer system from the payee computer system, second user identification data electronically obtained from an official government-issued identification document; (See column 5 lines 10-51 and column 6 lines 16-25));
approving by the first computer system, the transaction when the second user identification data corresponds to the first user identification data and the second account data corresponds to the first account (See column 5 lines 10-51 and column 6 lines 16-25).
Ganesan does not explicitly disclose account data (i.e. Social Security Number) as being an account number. However, Roden discloses account number include Social Security Numbers (See paragraph 0051). Therefore, it would have been obvious to one of the ordinary skills in the art at the time invention was filed to modify Ganesan reference to use the Social Security Number as an account number, because doing so only involves simple substitution of one known type of number for another in order to yield a predictable result.
Ganesan in view of Roden does not explicitly disclose: randomly generating, by the first computer system, a pass code that is different in each transaction; transmitting, by the first computer system, the pass code to the user; receiving, at the first computer system from the payee computer system, the pass code entered via a device interface; and transmitting, by the first computer system, an authorization to the device interface when the pass code received from the device interface matches the pass code transmitted to the user.
PHARRIS discloses: randomly generating, by the first computer system, a pass code that is different in each transaction; transmitting, by the first computer system, the pass code to the user; receiving, at the first computer system from the payee computer system, the pass code entered via a device interface; and transmitting, by the first computer system, an authorization to the device interface when the pass code received from the device interface matches the pass code transmitted to the user (See paragraphs 0057-0058, 0067 and 0072-0076). Therefore, it would have been obvious to one of the ordinary skills in the art at the time invention was filed to modify the combination of Ganesan and Roden references with the PHARRIS reference in order to prevent identity theft during payment transactions (See PHARRIS Abstract and paragraph 0023).
With respect to “payment network account number”, the “payment network” is just use as a tag to the data (i.e. account number) and descriptive language. This language does not functionally relate to storing, receiving and approving steps. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability, see In re Ngai, 70 USPQ2d 1862 (CAFC 2004); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983); In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994).
Therefore, it would have been obvious to a person of ordinary skill in the art at the time applicant’s invention was filed to store, receive and utilize any type of number because such type of number not functionally related to the steps/functions claimed and because the subjective interpretation of the data does not patentably distinguish the claimed invention.
With respect to claims 3, 11 and 19 Ganesan in view of Roden and in further view of PHARRIS discloses all the limitations. Ganesan further discloses: the first computer system comprises at least one of a personal communication device, a device interface, or a combination thereof (See column 8 lines 28-65).
With respect to claims 4, 12 and 20 Ganesan in view of Roden and in further view of PHARRIS discloses all the limitations. Ganesan further discloses: the device interface comprises at least one of a keyboard, a keypad, a monitor, a display, a terminal, a computer, a control panel, a vehicle dash board, a network interface, a machinery interface, a video interface, an audio interface, an electronic interface, a magnetic interface, an electromagnetic interface including an electromagnetic wave interface, an optical interface, a light interface, an acoustic interface, a contactless interface, a mobile phone interface, a smartphone interface, a personal computer interface, a personal digital assistant (PDA) interface, a handheld device interface, a portable device interface, a wireless interface, a wired interface, or a combination thereof (See column 8 lines 28-65).
With respect to claims 5, 13 and 21 Ganesan in view of Roden and in further view of PHARRIS discloses all the limitations. Ganesan further discloses: the payee computer system comprises at least one of a personal communication device, a device interface, or a combination thereof (See column 8 lines 10-40).
In addition, with respect to “the payee computer system comprises at least one of a personal communication device, a device interface, or a combination thereof.” These limitations do not have patentable weight because payee computer is not part of the claimed method, system and computer readable medium and considered as outside the scope of the claim.
With respect to claims 6, 14 and 22 Ganesan in view of Roden and in further view of PHARRIS discloses all the limitations. Ganesan further discloses: the device interface comprises at least one of a keyboard, a keypad, a monitor, a display, a terminal, a computer, a control panel, a vehicle dash board, a network interface, a machinery interface, a video interface, an audio interface, an electronic interface, a magnetic interface, an electromagnetic interface including an electromagnetic wave interface, an optical interface, a light interface, an acoustic interface, a contactless interface, a mobile phone interface, a smartphone interface, a personal computer interface, a personal digital assistant (PDA) interface, a handheld device interface, a portable device interface, a wireless interface, a wired interface, or a combination thereof(See column 8 lines 10-40).
In addition, with respect to “the payee computer system comprises at least one of a personal communication device, a device interface, or a combination thereof.” These limitations do not have patentable weight because payee computer is not part of the claimed method, system and computer readable medium and considered as outside the scope of the claim.
With respect to claims 7, 15 and 23 Ganesan in view of Roden and in further view of PHARRIS discloses all the limitations. Ganesan further discloses: the first account number is associated with at least one of a check, a credit card, a debit card, a gift card, a prepaid card, a stored value card, an ATM card, a wire, a letter of credit, a monetary instrument, an electronic fund transfer, an instrument for a financial account, or a combination thereof. (See column 5 lines 10-51).
In addition, these are nonfunctional descriptive material as it only describes the data (i.e., first account number), while description of the data is not used to perform any of the recited method steps. Therefore, it has been held the nonfunctional descriptive material will not distinguish the invention from the prior art in term of patentability. (In re Gulack, 217 USPQ 401 (Fed. Cir. 1983), In re Ngai, 70 USPQ2d (Fed. Cir. 2004), In re Lowry, 32 USPQ2d 1031 (Fed. Cir. 1994); MPEP 2111.05), Ex parte Nehls 88 USPQ2d 1883 (BPAI 2008) (precedential).
With respect to claims 8, 16 and 24 Ganesan in view of Roden and in further view of PHARRIS discloses all the limitations. Ganesan further discloses: the first user identification data is associated with at least one of a name, an address, a date of birth, a personal identification number, a user ID, a password, a tax identification number, a type of identification document, an identity number of an identification document, a country, a state, a government organization issuing the identification document, a private organization issuing the identification document, an expiration date of the identification document, a phone number, a screen name, an e-mail address, a photograph, a fingerprint, an iris scan, a physical (See column 5 lines 10-51).
In addition, these are nonfunctional descriptive material as it only describes the data (i.e., identification data), while description of the data is not used to perform any of the recited method steps. Therefore, it has been held the nonfunctional descriptive material will not distinguish the invention from the prior art in term of patentability. (In re Gulack, 217 USPQ 401 (Fed. Cir. 1983), In re Ngai, 70 USPQ2d (Fed. Cir. 2004), In re Lowry, 32 USPQ2d 1031 (Fed. Cir. 1994); MPEP 2111.05), Ex parte Nehls 88 USPQ2d 1883 (BPAI 2008) (precedential).
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.
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/ZESHAN QAYYUM/Primary Examiner, Art Unit 3697