DETAILED ACTION
This office action is in response to applicant’s communication dated 12/15/2025.
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 .
Claims’ Status
Claims 1, 3, 9, 12, 15, 17, 20, 22, 24, 26, and 27 are amended. Claims 2, 4, 7, 8, 11, 16, 18, 21, 25, and 29 are canceled. Claims 1, 3, 5-6, 9, 10, 12-15, 17, 19, 20, 22-24, 26-28, and 30-32 are pending in the present application and are considered in this action.
Response to Arguments
101 Rejection
Applicant’s 101 argument have been considered but they are not persuasive. The claims are not directed to an improvement in the functioning of a computer, but rather they are directed to improvement of a business process, namely an electronic payment transaction between a user and a merchant, using the existing/conventional technology. The claims are simply directed to managing a payment transaction between a payment device and a payment terminal based on cryptographic verifications. The cryptographic verification (1. Exchanging a cryptographic key between specific hardrware components; 2) executing programs on payment terminal and payment device; 3) transmitting personal information together with a cryptographic key; etc) is not invented by the Applicant nor are the claims reciting a novel ways of utilizing cryptographic verification technology. The claims are recited at a high level of generality, amounting to the limitation being carried out simply by a generic device. As discussed under the 101 section, the additional elements merely apply the abstract idea instead. The claims still amount to nothing more than merely verifying data (personal information) against a predetermined rule (transaction policy). The dependent claims also fail to include any additional elements to amount to a practical application or significantly more than the abstract idea. The claims are not patent eligible.
103 Rejection
With respect to Usui reference, the claimed element “personal information” in the payment device is itself already certified; paragraph [0005] describes ”To this end, a payment device comprises at least one item of personal information which is submitted in a certified manner to a payment terminal.” Therefore, Usui’s “an electronic certificate” reads on the claimed element “personal information”.
Rather than relying on Smith reference, Examiner decides to use Usui reference to teach all of the limitations of the independent claims in that Usui teaches the direct device-to-device cryptographic verification using locally exchanged keys without external validation authorities, see the new rejection below.
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 1-6, 9, 10, and 12-32 are rejected under 35 U.S.C. 101 because the claimed invention is not directed to patent eligible subject matter. The claimed matter is directed to a judicial exception (i.e. an abstract idea not integrated into a practical application) without significantly more.
Step 1 (The Statutory Categories): Is the claim to a process, machine, manufacture or composition of matter? MPEP 2106.03
Per Step 1, claim 1 is method claim; claims 15, 20, and 24 are system claims. Thus, independent claims 1, 15, 20, and 24 are directed to statutory subject matter.
However, independent claims 1, 15, 20, and 24 are rejected under 35 U.S.C. 101 because the claims recite an abstract idea, a judicial exception, without reciting additional elements that integrate the judicial exception into a practical application.
Independent claim recites (claims 1, 15, 20, and 24 being similar in scope):
Claim 1:
exchanging at least one cryptographic key between the payment device and the payment terminal via contact or contactless communication interfaces of the payment device and the payment terminal before performing a transaction step, wherein the payment device includes at least one item of personal information about the user stored in a non-volatile memory of the payment device, and the payment terminal includes at least one transaction policy stored in a non-volatile memory of the payment terminal including a condition relative to the at least one item of personal information
a verification step, prior to the transaction step, of securely verifying the condition of a transaction policy relative to the personal information using the at least one cryptographic key, the verification step including the payment device executing a program on a microprocessor of the payment device and the payment terminal executing a program on a microprocessor of the payment terminal; and the transaction step during which a transaction is validated or rejected.
wherein the verification step includes the payment device executing the program on the microprocessor of the payment device to transmit the personal information together with a cryptographic signature made using the personal information and the cryptographic key to the payment terminal via the contact or contactless communication interfaces and the payment terminal executing the program on the microprocessor of the payment terminal to authenticate the personal information and verify the condition of the transaction policy after authenticating the personal information; or the payment terminal executing the program on the microprocessor of the payment terminal to transmit a request to the payment device via the contact or contactless communication interfaces asking the payment device to verify the transaction policy, the request being signed using the cryptographic key, wherein the payment device executes the program on the microprocessor of the payment device to verify the condition of the transaction policy by the payment device, after authenticating the request using the cryptographic key, wherein the payment device creates and transmits a validation or invalidation message to the payment terminal via the contact or contactless communication interfaces depending on the condition and the at least one item of personal information
Step 2A Prong 1: Does the claim recite an abstract idea, law of nature, or natural phenomenon MPEP 2106.04, see also October 2019 Patent Eligibility Guidance Update (issued October 17, 2019) (“2019 PEG Update”).
The limitations, as drafted, constitute a process that, under its broadest reasonable interpretation, covers managing commercial interaction in the form of contracts; legal obligation under the Certain methods of organizing human activity, but for the recitation of generic computer components. That is, the drafted process is comparable to following rules or instructions. The abstract idea, recited above, includes a verification step, prior to the transaction step, of securely verifying the condition of a transaction policy relative to the personal information using the at least one cryptographic key; the verification step including the payment device executing a program on a microprocessor of the payment device and the payment terminal executing a program on a microprocessor of the payment terminal and the transaction step during which the a transaction is validated or rejected If a claim limitation, under its broadest reasonable interpretation, covers performance of limitations commercial interactions, but for the recitation of generic computer components, it falls within the Certain Methods of Organizing Human Activity – managing personal behavior or relationships or interactions between people grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A Prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application? MPEP 2106.04, see also 2019 PEG Update.
The recited computing elements (claims 1 ,15, 20, and 24: payment device; payment terminal; non-volatile memory; microprocessor; contact or contactless communication interface) are recited at a high-level of generality, i.e. as generic computing element performing generic computer functions such that it amounts to no more than mere instructions to apply the exception using generic computer components (see MPEP 2106.05(f)). Simply adding a general purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application or provide significantly more, since it amounts to no more than a recitation of the words "apply it" (or an equivalent) to implement an abstract idea or other exception on a computer, as set forth in MPEP 2106.05(f). Furthermore, the other additional elements “exchanging at least one cryptographic key between the payment device and the payment terminal via contact or contactless communication interfaces of the payment device and the payment terminal before performing a transaction step; the verification step includes the payment device executing the program on the microprocessor of the payment device to transmit the personal information together with a cryptographic signature made using the personal information and the cryptographic key to the payment terminal via the contact or contactless communication interfaces and the payment terminal executing the program on the microprocessor of the payment terminal to authenticate the personal information and verify the condition of the transaction policy after authenticating the personal information; or the payment terminal executing the program on the microprocessor of the payment terminal to transmit a request to the payment device via the contact or contactless communication interfaces asking the payment device to verify the transaction policy, the request being signed using the cryptographic key, wherein the payment device executes the program on the microprocessor of the payment device to verify the condition of the transaction policy by the payment device, after authenticating the request using the cryptographic key, wherein the payment device creates and transmits a validation or invalidation message to the payment terminal via the contact or contactless communication interfaces depending on the condition and the at least one item of personal information” are simply generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h) because verifying the transaction policy relative to the personal information is generally linked to the use of conducting an electronic payment transaction.
Accordingly, these additional claim elements, alone and in combination do not integrate the abstract idea into a practical application, because (1) they do not effect improvements to the functioning of a computer, or to any other technology or technical field (see MPEP 2106.05(a)); (2) they do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or a medical condition (see the Vanda memo); (3) they do not apply the abstract idea with, or by use of, a particular machine (see MPEP 2106.05(b)); (4) they do not effect a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)); (5) they do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the identified abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designated to monopolize the exception (see MPEP 2106.05(e) and the Vanda memo). Therefore, per Step 2A, Prong Two, the claim is directed to an abstract idea not integrated into a practical application.
Step 2B (The Inventive Concept): Does the claim recite additional elements that amount to significantly more than the judicial exception? MPEP 2106.05.
Step 2B of the eligibility analysis concludes that the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Examiner carries over the analysis from Step 2A related to the generic computing elements being no more than a recitation of the words "apply it" (or an equivalent) to implement an abstract idea or other exception on a computer (MPEP 2106.05(f)). The additional claim elements that are just “applying it” or “generally linking the use of the judicial exception to a particular technological environment or field of use” are mere instructions to implement an abstract idea on a computer, are carried over for further analysis in Step 2B.
When the independent claims are considered as a whole, as a combination, the claim elements noted above do not amount to any more than they amount to individually. The operations appear to merely apply the abstract concept to a technical environment in a very general sense. The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified as an abstract idea. Therefore, it is concluded that the elements of the independent claims are directed to one or more abstract ideas and do not amount to significantly more. (MPEP 2106.05)
Further, Step 2B of the analysis takes into consideration all dependent claims as well, both individually and as a whole, as a combination:
Claims 3, 6, 9, 10, 12-14, and 30 are further directed to additional abstract ideas because the steps performed are simply narrowing the scope of the abstract idea of claim 1 since their individual and combined significance is still not significantly more than the abstract concept at the core of the claimed invention. For example, claim 3 includes a request to the payment device; claim 6 includes a mutual authentication step; claim 9 also further narrows the verification step; claim 10 on enforcing a transaction step; claim 12 on additional steps of creating and transmitting a request; claim 13 also further narrows the verification step; claim 14 on modifying a transaction amount, which all of the limitation are narrowing the steps performed in claim 1.
Claim 5 is not directed to any additional abstract ideas but are directed to non-functional descriptive material, which describes how a transaction amount can be modified. While these descriptive elements may provide further helpful context for the claimed invention, these elements do not serve to confer subject matter eligibility to the invention since their individual and combined significance is still not significantly more than the abstract concept at the core of the claimed invention.
Moreover, the claims in the instant application do not constitute significantly more also because the claims or claim elements only serve to implement the abstract idea using computer components to perform computing functions (Enfish, see MPEP 2106.05(a)).
The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified in the independent claims as an abstract idea. The fact that the associated computing devices are facilitating the abstract concept is not enough to confer statutory subject matter eligibility. In sum, the additional elements do not serve to confer subject matter eligibility to the invention since their individual and combined significance is still not heavier than the abstract concepts at the core of the claimed invention. The other dependent claims, which are similar in scope to the dependent claims 3, 5, 6, 9, 10, 12-14, and 30 are rejected for the same reason as above. Therefore, it is concluded that the dependent claims of the instant application do not amount to significantly more either. (see MPEP 2106.05)
In sum, claims 1, 3, 5-6, 9, 10, 12-15, 17, 19, 20, and 22-24, and 26-28, and 30-32 are rejected under 35 USC 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 12, 15, 17, 20, 21, 24, 26, and 30-32 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Usui et al. (US20080027865A1).
With respect to claims 1, 15, 20, and 24
Usui teaches claim limitations of:
a microprocessor; a non-volatile memory; at least one item of personal information about the user stored in the non-volatile memory; at least one transaction policy stored in the non-volatile memory of the payment terminal including a condition relative to the at least one item of personal information; a contact or contactless communication interface ([0031]);
exchanging at least one cryptographic key between the payment device and the payment terminal via contact or contactless communication interfaces of the payment device and the payment terminal before performing a transaction step ([0009], The authenticating terminal includes: a component receiving the electronic certificate and the electronic signature from the portable terminal;….a component acquiring the attribute information listed in the electronic certificate, in a case in which the electronic signature is legitimate; and a component judging whether or not the attribute information satisfies a sales restricting condition of the good or service; see also [0033], A signature key for an electronic signature and an electronic certificate issued by the electronic authenticating service system 107 are stored in the memory 216 of the non-contact IC card section 215; see also [0025], The seller inputs the charged amount and the like into the electronic money account-settling terminal 101 at the store of the seller. The buyer places the portable terminal 100 near a non-contact IC card reading section of the electronic money account-settling terminal 101, and completes the account-settling; see also [0044], The electronic money account-settling terminal 101 verifies the restrictions on the sale on the basis of the decrypted attribute data. Specifically, in the case of a sale which is limited to those who are 20 years of age or older, from the attribute data of the date of birth and the current date, it is computed and verified that the buyer is 20 or older (step S018). The electronic money account-settling terminal 101 displays the results of verification of the sales restrictions and the attribute information (the computed age, or the name and address), and if the sale is permissible, advances the processing on to step S020; see also [0024], Note that the portable terminal 100 is an example of a portable terminal, and the electronic money account-settling terminal 101 is an example of an authenticating terminal.):
wherein the payment device includes at least one item of personal information about the user stored in a non-volatile memory of the payment device ([0027], By an electronic authenticating service system 107, an authenticating service provider provides the issuing of electronic certificates to buyers, and, to sellers, the two services of verifying electronic signatures and providing personal attribute information; [0033], A signature key for an electronic signature and an electronic certificate issued by the electronic authenticating service system 107 are stored in the memory 216 of the non-contact IC card section 215. Or, the storage location may be on the nonvolatile memory section 212.), and the payment terminal includes at least one transaction policy stored in a non-volatile memory of the payment terminal including a condition relative to the at least one item of personal information (see claim 7, the authenticating terminal includes:…….a component judging whether or not the attribute information satisfies a sales restricting condition of the good or service.)
a verification step, prior to the transaction step, of securely verifying the condition of a transaction policy relative to the personal information using the at least one cryptographic key ([0060], a component judging whether or not the electronic signature is legitimate, in accordance with whether or not the electronic signature was generated by the signature key corresponding to a signature verifying key listed in the electronic certificate; a component acquiring the attribute information listed in the electronic certificate, in a case in which the electronic signature is legitimate; and a component judging whether or not the attribute information satisfies a sales restricting condition of the good or service.), the verification step including the payment device executing a program on a microprocessor of the payment device and the payment terminal executing a program on a microprocessor of the payment terminal (see [0031-0032]); and the transaction step during which the a transaction is validated or rejected ([0043], If the electronic signature is legitimate, the electronic money account-settling terminal 101 advances the processing on to step S017, and if the electronic signature is not legitimate, the electronic money account-settling terminal 101 displays an error message and ends the account settlement (step S006).)
wherein the verification step includes the payment device executing the program on the microprocessor of the payment device to transmit the personal information together with a cryptographic signature made using the personal information and the cryptographic key to the payment terminal via the contact or contactless communication interfaces and the payment terminal executing the program on the microprocessor of the payment terminal to authenticate the personal information and verify the condition of the transaction policy after authenticating the personal information; or the payment terminal executing the program on the microprocessor of the payment terminal to transmit a request to the payment device via the contact or contactless communication interfaces asking the payment device to verify the transaction policy, the request being signed using the cryptographic key, wherein the payment device executes the program on the microprocessor of the payment device to verify the condition of the transaction policy by the payment device, after authenticating the request using the cryptographic key, wherein the payment device creates and transmits a validation or invalidation message to the payment terminal via the contact or contactless communication interfaces depending on the condition and the at least one item of personal information ([0060], In accordance with an aspect of the present invention, there is provided a individual identifying/attribute authenticating system having: a portable terminal possessed by a buyer of a good or service; and an authenticating terminal set at a seller of the good or service, wherein the portable terminal includes: a storage component storing an electronic certificate, which lists attribute information of the buyer, and a signature key which are issued by an electronic authenticating service system; a component generating an electronic signature by using the signature key; and a component transmitting the electronic certificate and the electronic signature to the authenticating terminal, and the authenticating terminal includes: a component receiving the electronic certificate and the electronic signature from the portable terminal; a component judging whether or not the electronic signature is legitimate, in accordance with whether or not the electronic signature was generated by the signature key corresponding to a signature verifying key listed in the electronic certificate; a component acquiring the attribute information listed in the electronic certificate, in a case in which the electronic signature is legitimate; and a component judging whether or not the attribute information satisfies a sales restricting condition of the good or service..; see also [0044], The electronic money account-settling terminal 101 verifies the restrictions on the sale on the basis of the decrypted attribute data. Specifically, in the case of a sale which is limited to those who are 20 years of age or older, from the attribute data of the date of birth and the current date, it is computed and verified that the buyer is 20 or older (step S018); see also [0036], Namely, in a case in which attribute information such as name, date of birth and the like which are personal information are stored in the subject 407, all of the attribute information recorded in the subject 407 can be referred to by the buyer.)
With respect to claims 20
Usui teaches claim limitations of:
a microprocessor; a non-volatile memory including at least one item of personal information about the user stored in the non-volatile memory; a contact or contactless communication interface ([0031]); wherein the payment device is configured to exchange at least one cryptographic key with the payment terminal via the contact communication interface or the contactless communication interface ([0009], The authenticating terminal includes: a component receiving the electronic certificate and the electronic signature from the portable terminal;….a component acquiring the attribute information listed in the electronic certificate, in a case in which the electronic signature is legitimate; and a component judging whether or not the attribute information satisfies a sales restricting condition of the good or service; see also [0033], A signature key for an electronic signature and an electronic certificate issued by the electronic authenticating service system 107 are stored in the memory 216 of the non-contact IC card section 215; see also [0025], The seller inputs the charged amount and the like into the electronic money account-settling terminal 101 at the store of the seller. The buyer places the portable terminal 100 near a non-contact IC card reading section of the electronic money account-settling terminal 101, and completes the account-settling; see also [0044], The electronic money account-settling terminal 101 verifies the restrictions on the sale on the basis of the decrypted attribute data. Specifically, in the case of a sale which is limited to those who are 20 years of age or older, from the attribute data of the date of birth and the current date, it is computed and verified that the buyer is 20 or older (step S018). The electronic money account-settling terminal 101 displays the results of verification of the sales restrictions and the attribute information (the computed age, or the name and address), and if the sale is permissible, advances the processing on to step S020; see also [0024], Note that the portable terminal 100 is an example of a portable terminal, and the electronic money account-settling terminal 101 is an example of an authenticating terminal.), wherein the payment device is configured to securely verify a condition of a transaction policy relative to the at least one item of personal information using the cryptographic key ([0060], a component judging whether or not the electronic signature is legitimate, in accordance with whether or not the electronic signature was generated by the signature key corresponding to a signature verifying key listed in the electronic certificate; a component acquiring the attribute information listed in the electronic certificate, in a case in which the electronic signature is legitimate; and a component judging whether or not the attribute information satisfies a sales restricting condition of the good or service.), including the payment device executing a program on the microprocessor for verifying the condition ([0027], By an electronic authenticating service system 107, an authenticating service provider provides the issuing of electronic certificates to buyers, and, to sellers, the two services of verifying electronic signatures and providing personal attribute information; [0033], A signature key for an electronic signature and an electronic certificate issued by the electronic authenticating service system 107 are stored in the memory 216 of the non-contact IC card section 215. Or, the storage location may be on the nonvolatile memory section 212.),
wherein the securely verifying the condition of the transaction policy comprises the payment device executing the program on the microprocessor of the payment device to transmit the at least one item of personal information to the payment terminal via the contact or contactless communication interfaces in a message signed using the at least one item of personal information and the cryptographic key and the payment terminal executing a program on a microprocessor of the payment terminal to authenticate the at least one item of personal information using the cryptographic key ([0060], In accordance with an aspect of the present invention, there is provided a individual identifying/attribute authenticating system having: a portable terminal possessed by a buyer of a good or service; and an authenticating terminal set at a seller of the good or service, wherein the portable terminal includes: a storage component storing an electronic certificate, which lists attribute information of the buyer, and a signature key which are issued by an electronic authenticating service system; a component generating an electronic signature by using the signature key; and a component transmitting the electronic certificate and the electronic signature to the authenticating terminal, and the authenticating terminal includes: a component receiving the electronic certificate and the electronic signature from the portable terminal; a component judging whether or not the electronic signature is legitimate, in accordance with whether or not the electronic signature was generated by the signature key corresponding to a signature verifying key listed in the electronic certificate; a component acquiring the attribute information listed in the electronic certificate, in a case in which the electronic signature is legitimate; and a component judging whether or not the attribute information satisfies a sales restricting condition of the good or service..; see also [0044], The electronic money account-settling terminal 101 verifies the restrictions on the sale on the basis of the decrypted attribute data. Specifically, in the case of a sale which is limited to those who are 20 years of age or older, from the attribute data of the date of birth and the current date, it is computed and verified that the buyer is 20 or older (step S018); see also [0036], Namely, in a case in which attribute information such as name, date of birth and the like which are personal information are stored in the subject 407, all of the attribute information recorded in the subject 407 can be referred to by the buyer.)
With respect to claims 24
Usui teaches claim limitations of:
a microprocessor; a non-volatile memory including at least one transaction policy stored in the non-volatile memory comprising a condition relative to at least one item of personal information about the user; a contact or contactless communication interface ([0031]);
wherein the payment terminal is configured to exchange at least one cryptographic key with the payment device via the contact or contactless communication interface before implementing a transaction step during which the transaction is validated or rejected ([0009], The authenticating terminal includes: a component receiving the electronic certificate and the electronic signature from the portable terminal;….a component acquiring the attribute information listed in the electronic certificate, in a case in which the electronic signature is legitimate; and a component judging whether or not the attribute information satisfies a sales restricting condition of the good or service; see also [0033], A signature key for an electronic signature and an electronic certificate issued by the electronic authenticating service system 107 are stored in the memory 216 of the non-contact IC card section 215; see also [0025], The seller inputs the charged amount and the like into the electronic money account-settling terminal 101 at the store of the seller. The buyer places the portable terminal 100 near a non-contact IC card reading section of the electronic money account-settling terminal 101, and completes the account-settling; see also [0044], The electronic money account-settling terminal 101 verifies the restrictions on the sale on the basis of the decrypted attribute data. Specifically, in the case of a sale which is limited to those who are 20 years of age or older, from the attribute data of the date of birth and the current date, it is computed and verified that the buyer is 20 or older (step S018). The electronic money account-settling terminal 101 displays the results of verification of the sales restrictions and the attribute information (the computed age, or the name and address), and if the sale is permissible, advances the processing on to step S020; see also [0024], Note that the portable terminal 100 is an example of a portable terminal, and the electronic money account-settling terminal 101 is an example of an authenticating terminal; see also ([0043], If the electronic signature is legitimate, the electronic money account-settling terminal 101 advances the processing on to step S017, and if the electronic signature is not legitimate, the electronic money account-settling terminal 101 displays an error message and ends the account settlement (step S006).) and
wherein the payment terminal is configured to implement a verification step, prior to the transaction step, during which the condition of the transaction policy relative to the at least one item of personal information is securely verified using the cryptographic key ([0060], a component judging whether or not the electronic signature is legitimate, in accordance with whether or not the electronic signature was generated by the signature key corresponding to a signature verifying key listed in the electronic certificate; a component acquiring the attribute information listed in the electronic certificate, in a case in which the electronic signature is legitimate; and a component judging whether or not the attribute information satisfies a sales restricting condition of the good or service.), the verification step including the payment terminal executing a program on the microprocessor for verifying the condition ([0027], By an electronic authenticating service system 107, an authenticating service provider provides the issuing of electronic certificates to buyers, and, to sellers, the two services of verifying electronic signatures and providing personal attribute information; [0033], A signature key for an electronic signature and an electronic certificate issued by the electronic authenticating service system 107 are stored in the memory 216 of the non-contact IC card section 215. Or, the storage location may be on the nonvolatile memory section 212.)
wherein the payment terminal is configured to receive a message via the contact or contactless communication interface containing the at least one item of personal information signed by the payment device using the at least one item of personal information and the cryptographic key, and wherein the payment terminal executes the program on the microprocessor to verify the condition after authenticating the at least one item of personal information using the cryptographic key, wherein said payment terminal is a point of sale terminal for a smart card, a mobile phone or tablet comprising a secure payment storage capacity, or a cash register comprising a secure payment storage capacity ([0060], In accordance with an aspect of the present invention, there is provided a individual identifying/attribute authenticating system having: a portable terminal possessed by a buyer of a good or service; and an authenticating terminal set at a seller of the good or service, wherein the portable terminal includes: a storage component storing an electronic certificate, which lists attribute information of the buyer, and a signature key which are issued by an electronic authenticating service system; a component generating an electronic signature by using the signature key; and a component transmitting the electronic certificate and the electronic signature to the authenticating terminal, and the authenticating terminal includes: a component receiving the electronic certificate and the electronic signature from the portable terminal; a component judging whether or not the electronic signature is legitimate, in accordance with whether or not the electronic signature was generated by the signature key corresponding to a signature verifying key listed in the electronic certificate; a component acquiring the attribute information listed in the electronic certificate, in a case in which the electronic signature is legitimate; and a component judging whether or not the attribute information satisfies a sales restricting condition of the good or service..; see also [0044], The electronic money account-settling terminal 101 verifies the restrictions on the sale on the basis of the decrypted attribute data. Specifically, in the case of a sale which is limited to those who are 20 years of age or older, from the attribute data of the date of birth and the current date, it is computed and verified that the buyer is 20 or older (step S018); see also [0036], Namely, in a case in which attribute information such as name, date of birth and the like which are personal information are stored in the subject 407, all of the attribute information recorded in the subject 407 can be referred to by the buyer; see also [0024].)
With respect to claim 3
Usui teaches the limitation of claim 1. Usui further teaches: wherein, prior to sending the at least one item of personal information, the payment terminal sends a request to the payment device asking the payment device to send the at least one item of personal information ([0041], The seller operates the electronic money account-settling terminal 101, and inputs, to the electronic money account-settling terminal 101, the charged amount and a request for the necessary attribute information (e.g., date of birth, name) (step S001). The buyer sets the portable terminal 100 near the electronic money account-settling terminal 101 (step S002). Due to the portable terminal 100 being set near to the electronic money account-settling terminal 101, the electronic money account-settling terminal 101 issues an electronic certificate request to the portable terminal 100 (step S003).)
With respect to claim 12, 17, and 26
Usui teaches the limitation of claim 1, 15, and 24 respectively. Usui further teaches: to create and transmit a request to the payment device to obtain the personal information ([0041], The seller operates the electronic money account-settling terminal 101, and inputs, to the electronic money account-settling terminal 101, the charged amount and a request for the necessary attribute information (e.g., date of birth, name) (step S001). The buyer sets the portable terminal 100 near the electronic money account-settling terminal 101 (step S002). Due to the portable terminal 100 being set near to the electronic money account-settling terminal 101, the electronic money account-settling terminal 101 issues an electronic certificate request to the portable terminal 100 (step S003).)
With respect to claim 21
Usui teaches the limitation of claim 20. Usui further teaches: the payment device executes the program on the microprocessor of the payment device to transmit the personal information to the payment terminal via the contact or contactless communication interfaces in a message signed using the personal information and the cryptographic key and the payment terminal executes a program on a microprocessor of the payment terminal to authenticate the personal information. ([0060], In accordance with an aspect of the present invention, there is provided a individual identifying/attribute authenticating system having: a portable terminal possessed by a buyer of a good or service; and an authenticating terminal set at a seller of the good or service, wherein the portable terminal includes: a storage component storing an electronic certificate, which lists attribute information of the buyer, and a signature key which are issued by an electronic authenticating service system; a component generating an electronic signature by using the signature key; and a component transmitting the electronic certificate and the electronic signature to the authenticating terminal, and the authenticating terminal includes: a component receiving the electronic certificate and the electronic signature from the portable terminal; a component judging whether or not the electronic signature is legitimate, in accordance with whether or not the electronic signature was generated by the signature key corresponding to a signature verifying key listed in the electronic certificate; a component acquiring the attribute information listed in the electronic certificate, in a case in which the electronic signature is legitimate; and a component judging whether or not the attribute information satisfies a sales restricting condition of the good or service..; see also [0044], The electronic money account-settling terminal 101 verifies the restrictions on the sale on the basis of the decrypted attribute data. Specifically, in the case of a sale which is limited to those who are 20 years of age or older, from the attribute data of the date of birth and the current date, it is computed and verified that the buyer is 20 or older (step S018); see also [0036], Namely, in a case in which attribute information such as name, date of birth and the like which are personal information are stored in the subject 407, all of the attribute information recorded in the subject 407 can be referred to by the buyer.)
With respect to claim 30-32
Usui teaches the limitation of claim 1, 15, and 20 respectively. Usui further teaches: wherein the at least one item of personal information about the user is stored in a protected area of the non-volatile memory of the payment device inaccessible to the contact or contactless communication interface of the payment device ([0033], A signature key for an electronic signature and an electronic certificate issued by the electronic authenticating service system 107 are stored in the memory 216 of the non-contact IC card section 215. Or, the storage location may be on the nonvolatile memory section 212. A signature program 213, which is an application program which generates an electronic signature in accordance with the signature key on the non-contact IC card section 215, is stored on the nonvolatile memory section 212.)
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 10, 23, and 25 are rejected under 35 U.S.C 103 as obvious over in view of Usui et al. (US20080027865A1) in view of Smith et al. (US20210065267A1).
With respect to claim 10
Usui teaches the limitation of claim 1. Usui doesn’t explicitly disclose, but Smith teaches: wherein the transaction step is implemented if and only if the condition is met ([0067], In examples, requester 116 may check the attestation address on attestation blockchain 114 to see if there is a non-zero transaction at that address. If every step of this process matches the sent values, and if there is a non-zero transaction at the attestation address, then requester 116 may have confidence that the requested information (for user 102 a to be eligible to access the good or service) is accurate, current, and associated with user 102 a.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Usui with the teaching of Smith as they relate to method of facilitating electronic payment. One of ordinary skill in the art before effective filing date of the claimed invention was made would have recognized the method of executing payment transaction in Usui to include a method of executing transaction step if and only if the condition is met as taught in Smith for the predicated result of implementing additional security feature during the payment transaction.
With respect to claim 23
Usui teaches the limitation of claim 20. Usui doesn’t explicitly disclose, but Smith teaches: wherein the payment device is one of the following devices: smart card complying with standard IS07816 and/or standard 14443, mobile phone or tablet comprising a secure payment capacity, smart watch comprising payment features, secure computer comprising a contact or contactless communication interface and comprising a secure payment capacity ([0021], the smartcard reader 110 is communicably connected to the computing device 115. In this way, the computing device 115 and the smartcard reader 110 may exchange information and commands. Further, as illustrated in FIG. 3, the computing device 115 may also be connected to the validation authority 120 and the merchant 130 through a network 150, according to an exemplary operating environment of the present invention. Using the network 150, which may comprise any medium (e.g., Internet) that allows secure information to flow between the parties, the merchant 130, validation authority 120, and computing device 115 may pass information to one another.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Usui with the teaching of Smith as they relate to method of facilitating electronic payment. One of ordinary skill in the art before effective filing date of the claimed invention was made would have recognized the method of executing payment transaction in Usui to include a system of determining the payment device to be used as taught in Smith for the predicated result of implementing additional security feature during the payment transaction.
With respect to claim 25
Usui teaches the limitation of claim 24. Usui doesn’t explicitly disclose, but Smith teaches: wherein the payment terminal is configured to receive a message via the contact or contactless communication interface containing the personal information signed by the payment device using the personal information and the cryptographic key and wherein the payment terminal executes the program on the microprocessor to verify the condition after authenticating the personal information using the cryptographic key (see at least [0049].)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Usui with the teaching of Smith as they relate to method of facilitating electronic payment. One of ordinary skill in the art before effective filing date of the claimed invention was made would have recognized the method of executing payment transaction in Usui to include a method of receiving personal information signed by the payment device using the personal information and the cryptographic key as taught in Smith for the predicated result of implementing additional security feature during the payment transaction.
Claims 5, 14, 19, and 28 are rejected under 35 U.S.C 103 as obvious over Usui et al. (US20080027865A1) in view of Copeland et al. (US20080265020A1).
With respect to claim 5, 14, 19, and 28
Usui teaches the limitation of claim 1. Usui does not explicitly disclose, but Copeland teaches: further comprising modifying a transaction amount by the payment terminal depending on a result of the verification step ([0052], As discussed, the validation authority 120 may manage taxes for the user and/or merchant 130. To calculate the tax attributable to the specific transaction, the validation authority 120 can receive, at step 745, the amount of the payment transaction from the merchant 130 (via the point-of-sale terminal or merchant application 135.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Copeland with the teaching of Usui as they relate to method of facilitating electronic payment. One of ordinary skill in the art before effective filing date of the claimed invention was made would have recognized the method of executing payment transaction in Usui to include the method of modifying a transaction amount by a payment terminal as taught in Copeland for the predicated result of implementing additional security feature during the payment transaction.
Claim 6 is rejected under 35 U.S.C 103 as obvious over Usui et al. (US20080027865A1) in view of Peng et al. (US20170061437A1).
With respect to claim 6
Usui teaches the limitation of claim 1. Usui does not explicitly disclose, but Peng teaches: wherein the cryptographic key is exchanged during a mutual authentication step (see [0074-0075])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Peng with the teaching of Usui as they relate to method of facilitating electronic payment. One of ordinary skill in the art before effective filing date of the claimed invention was made would have recognized the method of executing payment transaction in Usui to the method of conducing mutual authentication with exchanging key as taught in Peng for the predicated result of implementing additional security feature during the payment transaction.
Claims 9, 13, 18, 22, and 27 rejected under 35 U.S.C 103 as obvious over Usui et al. (US20080027865A1) in view of Thorne (US20180005235A1).
With respect to claim 9, 13, 18, 22, and 27
Usui teaches the limitation of claim 1, 10, 15, 20, and 24 respectively. Usui further teaches: wherein the verification step includes the payment terminal executing the program on the microprocessor of the payment terminal to transmit a request to the payment device via the contact or contactless communication interfaces asking the payment device to verify the transaction policy, …….wherein the payment device executes the program on the microprocessor of the payment device to verify the condition of the transaction policy by the payment device after authenticating the request using the cryptographic key ([0060], In accordance with an aspect of the present invention, there is provided a individual identifying/attribute authenticating system having: a portable terminal possessed by a buyer of a good or service; and an authenticating terminal set at a seller of the good or service, wherein the portable terminal includes: a storage component storing an electronic certificate, which lists attribute information of the buyer, and a signature key which are issued by an electronic authenticating service system; a component generating an electronic signature by using the signature key; and a component transmitting the electronic certificate and the electronic signature to the authenticating terminal, and the authenticating terminal includes: a component receiving the electronic certificate and the electronic signature from the portable terminal; a component judging whether or not the electronic signature is legitimate, in accordance with whether or not the electronic signature was generated by the signature key corresponding to a signature verifying key listed in the electronic certificate; a component acquiring the attribute information listed in the electronic certificate, in a case in which the electronic signature is legitimate; and a component judging whether or not the attribute information satisfies a sales restricting condition of the good or service..; see also [0044], The electronic money account-settling terminal 101 verifies the restrictions on the sale on the basis of the decrypted attribute data. Specifically, in the case of a sale which is limited to those who are 20 years of age or older, from the attribute data of the date of birth and the current date, it is computed and verified that the buyer is 20 or older (step S018); see also [0036], Namely, in a case in which attribute information such as name, date of birth and the like which are personal information are stored in the subject 407, all of the attribute information recorded in the subject 407 can be referred to by the buyer.), wherein the payment device creates and transmits a validation or invalidation message to the payment terminal via the contact or contactless communication interfaces depending on the condition and the at least one item of personal information (see [0054-0055].)
Usui does not explicitly disclose, but Thorne teaches:
the request being signed using the cryptographic key ([0018], Digitally signing the transaction request 104 provides assurance that the transaction request 104 is from the originator 101 and was not modified after signing. The process of digitally signing the transaction request 104 in this example illustration involves two steps. First, a cryptographic hash function 106 takes the transaction request 104 as input and produces a message digest 108. The second step involves encoding the message digest 108 with a private key 110 (bound to the device 102 and/or the originator 101) to generate a digital signature 114 for the transaction request 104.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Thorne with the teaching of Usui as they relate to method of facilitating electronic payment. One of ordinary skill in the art before effective filing date of the claimed invention was made would have recognized the system of Usui, for example the method of executing payment transaction in Usui, to the method of signing the request with a key as taught in Throne for the predicated result of implementing additional security feature during the payment transaction.
Conclusion
THIS ACTION IS MADE Non-FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/YIN Y CHOI/Examiner, Art Unit 3699 1/10/2026