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 .
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 1,5-7,8,12-14,15,19-24,27-29 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.
In the claims a step to “transfer, using the authentication token, a backing amount from the
backing source to a secured source linked to the processing alias:” is not described in the originally filed specification.
The only use of the toke is described in paragraph [0055-0056]
In response, the alias service 113 could receive an authentication token that would allow the alias service 113 to authenticate with the cryptocurrency exchange on behalf of the user in the future. [0056] Subsequently, at block 411 the alias service 113 can store the authentication token received at block 409 in conjunction with the identity of the cryptocurrency exchange as the backing source 133. As a result, the cryptocurrency account of the individual at the cryptocurrency exchange is linked to the processing alias 129 as a backing source 133.
Accordingly, there is insufficient description for transferring funds using the token.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1,5-7,8,12-14,15,19-24,27-29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In the amended claims the following limitations are vague and indefinite:
“generate a processing alias for the {selected} payment processing network” .
It is not clear what the metes and bounds of alias are within the context of the invention. The alias feature takes on at least two interpretations. It could be from the perspective of the receiving interchange or from the perspective of the source private key cryptocurrency account”
The specification states that “in another example, an individual could generate an AMERICAN EXPRESS processing alias (or a processing alias for another payment card interchange network) that is linked to or funded by another type of backing source (e.g., a cryptocurrency account on a cryptocurrency exchange, a demand deposit account with a bank, etc.). [0012] As a result, the individual is able to complete transactions with a point-of- sale terminal that is not configured to operate with the backing source. For example, suppose that a point-of-sale (POS) terminal is unable to accept cryptocurrency coins or tokens (e.g., BITCOIN, ETHEREUM, various stable coins, etc.) as payment, but could accept AMERICAN EXPRESS or other payment interchange network branded transaction cards. [0013].
transfer, using the authentication token, a backing amount from the
backing source to a secured source linked to the processing alias:
This limitation can take on 2 or more inconsistent interpretations. In the first, for example, the backing amount is transferred along (attached to) the token. In the second, the backing amount is transferred subsequent to using the token.
In addition, the backing “amount” is indefinite in scope in that it is transferred prior to the communication request from the point of sale terminal.
Claim Rejections - 35 USC § 101
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 1,5-7,8,12-14,15,19-24,27-29 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
The claims fall within at least one of the four categories of patent eligible subject matter. The claimed invention is directed to “processing a transaction on a transaction network with an alias to that network and a backing source not alias to the transaction network” without significantly more.
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Analysis:
Issue 1: Statutory Category?
Yes – The claims are directed to a system, method and computer readable medium.
Issue 2A - Prong 1: Judicial Exception Recited? Yes.
The steps that make up the abstract idea in representative claim 1 are the following;
send user interface content to a client device of a user, wherein the user
interface content is presented on a display of the client device, wherein the user
interface content includes a list of payment processing networks and a plurality of
backing sources that are registered with a user account of the user;
receive a first selection of a payment processing network from a plurality
of available payment processing networks from the client device of the user;
receive a second selection of a backing source from the plurality of
backing sources registered with the user account of the user, wherein the
backing source comprises a cryptocurrency exchange account of the user;
generate a processing alias for the payment processing network;
store an association between the processing alias and the backing source
that is registered with the user account of the user
receive an authentication token from the cryptocurrency exchange
associated with the cryptocurrency exchange account of the user;
transfer, using the authentication token, a backing amount from the
backing source to a secured source linked to the processing alias;
subsequently receive a processing request through the payment
processing network from a point-of-sale terminal, the processing request
comprising a processing amount and an alias identifier associated with the
processing alias; and
in response to receipt of the processing request, transfer, from the
secured source, an amount equal to the processing amount to an originator of
the processing request via the point-of-sale terminal.
The steps are certain methods of organizing human activity, with concepts performed in the human mind, including an observation, evaluation, judgment. Thus, claim 1 recites receiving, analyzing data and generating data. None of the limitations recites technological implementation details for any of these steps, but instead recite only results desired by any and all possible means.
Issue 2A - Prong 2: Integrated into a Practical Application?
The components beyond the abstract idea are the client device comprising a processor and memory and the interchange network.
Having concluded that the representative claim recites a judicial exception under Step 2A, Prong One, the next consideration is whether the claim recites additional elements that integrate the judicial exception into a practical application. MPEP §§ 2106.04(II)(a), 2106.04(d). Relevant considerations for evaluating whether additional elements (given their broadest reasonable interpretation) integrate a judicial exception into a practical application include: an improvement in the functioning of a computer or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
Notably the step to “transfer, using the authentication token, a backing amount from the
backing source to a secured source linked to the processing alias” is interpreted as “applying” the invention using APIs and the like to link the cryptocurrency source account to the default source account associated with the card/account used for the transaction that is permitted to be routed on the interchange network.
The claimed processor, processing network, memory and machine-readable medium perform steps expressed purely in terms of results, devoid of implementation details. The application of the abstract idea “applied” to generic computer systems and technology used in their ordinary capacity to implement the abstract idea is insufficient for patent eligibility. As claimed, when read in their broadest reasonable interpretation, there are no improvements to the any of these claimed components. The steps recite basic data operations such as generating, updating and storing of data.
Issue 2B: Claim(s) Provide(s) an Inventive Concept?
The components beyond the abstract idea are the same as under the 2A-2 analysis.
The next issue is whether claim 1 provides an inventive concept because the additional elements recited in the claim provide significantly more than the recited judicial exception.
Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer for modifying, analyzing, and transmitting data amounts to electronic data query and retrieval—one of the most basic functions of a computer. All of these computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses.
US Patent Publication 20180201857 teaches the conventionality of processing an alias in a network; “In various embodiments, an alias may be used to avoid sending the loyalty account number over a network and reduce the footprint in case of a security breach. The alias may include an issuing bank ID and a loyalty reference ID number that is mapped to identify the loyalty rewards account. The alias may meet all the rules for a transaction account number (e.g., a credit card number), such as including an issuing bank ID of the specified length, a transaction account number of the specified length, and/or a check digit as appropriate. In that regard, the alias may have the form and structure of a valid transaction account number (i.e., pass a structure checking algorithm) and behave like a valid transaction account number when used in interfaces (e.g., web applications and web sites) that check the structure of the account number. The network server 106 may be able to convert the alias into the loyalty account number as well as convert the loyalty account number into the alias. In that regard, the loyalty account alias may be indistinguishable from an alias of a credit or banking account funding source alias for use in a digital wallet.” Accordingly, with the relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea on a generic computer, here they do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer for receiving and analyzing data amounts to electronic data query and retrieval—one of the most basic functions of a computer. All of these computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses. Likewise linking data files (accounts) for different purposes is likewise generic. In short, each step does no more than require a generic computer
to perform generic computer functions. As to the data operated upon, “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am., 898 F.3d at 1168.
Considered as an ordered combination, the computer components of claim 1 add nothing that is not already present when the steps are considered separately.
Claims 5 add further processing steps that are rejected for the same reasons above. In addition, the claim adds a point of sale terminal. Applying the analysis under 2A-2 and 2B above the point of sale terminal offers no improvement to and/or no nonconventional use of the point of sale device and therefor does not change the analysis.
As to claim 6, the generating an alias is a further abstract idea that is rejected for the reasons above. As to invoking an API function of the processing network, the use of APIs is generic computer function to which the applicant’s specification asserts no inventive step.
As to claim 7, the processing networks are end points and not claimed per se and thus are rejected for the reasons of the independent claim.
As to claims 22-23, the claims further describe the abstract idea that do not add any additional elements beyond the representative claim and are rejected based on the analysis of the representative claim.
Claim 8+ are the methods equivalent of the system claims
Claims 15+ are computer readable medium of system claims.
Response to Arguments
The claim amendments overcome the 112 rejections of the previous office action.
As to the 101 rejection, the applicant argues that the claims are analogous to Example 35 provided as Eligibility Guidance integrating the subject matter into the practical implementation or workflow of
electronic payment transaction processing in a non-conventional way.
As an initial matter, the examiner notes that the additional limitations of generating of selecting a payment network and a backing source account are
extra-pre-solution activities that do not confer patent eligibility. See, e.g., Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)
The applicant argues that the present application recites a specific, discrete implementation of the alleged abstract idea that addresses unique problems associated with electronic payment networks. As
indicated in paragraphs 0011-0012 of the present application, electronic payment
networks are difficult to develop and maintain, while suffering from various limitations as it improves the functionality of a traditional payment network by integrating
processing aliases in an unconventional way within a payment network to perform
electronic payment transactions. The argument is not persuasive as the examiner has demonstrated that the use of aliased as claimed – broadly construed is routine and conventional as alias accounts include prepaid accounts accepted on the interchange network. (See NPL Document from AMEX “Re:Proposed Rule on Debit Card Interchange Fees and Routing, Docket No. R-1404)
The applicant next argues that in combination, the elements of claim 1, is a
new system/process for carrying out electronic payment transactions on a payment
network. This argument in not persuasive as it is not commensurate with the claimed invention. While the alleged new system described in the specification where an individual could use the various embodiments of the resent disclosure for the practical purpose of paying with his or her cryptocurrency coins or tokens by generating an AMERICAN EXPRESS processing alias . The claims broadly construed read on a payment using a generic processing alias any payment card on any interchange network. While the alias nature of the processing is unclear (as discussed in the 112 rejection), it could include ay conventional aliases such as AMEX debit cards and the like. (See NPL Document from AMEX “Re:Proposed Rule on Debit Card Interchange Fees and Routing, Docket No. R-1404)
THIS ACTION IS MADE FINAL. 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 RICHARD C WEISBERGER whose telephone number is (571)272-6753. The examiner can normally be reached Monday - Thursday 10AM-8PM PCT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Anderson can be reached on 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD C WEISBERGER/ Primary Examiner, Art Unit 3693
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