DETAILED ACTION
This office action is in response to applicant’s communication dated 5/12/2026.
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, 15, 20, 24, and 27 are amended. Claims 2-4, 7, 8, 11, 12, 16, 18, 21-22, 25-26, and 29 are canceled. Claims 1, 5-6, 9, 10, 13-15, 17, 19, 20, 23-24, 27-28, and 30-32 are pending in the present application and are considered in this action.
Response to Arguments
101 Rejection
Previously Examiner made a comment in the office action that the “cryptographic verification” is not invented by the Applicant nor are the claims reciting a novel way of utilizing cryptographic verification technology. Examiner would like to point out this comment does not necessarily mean that “cryptographic verification” lacks novelty; it is rather a general statement stating that “cryptographic verification” lacks technical improvement with respect to evaluating the 101 rejection.
The amendment of “using a APDU command to verify a transaction policy on a payment device” is not a technical improvement, it is rather a business improvement because it is nothing more than using any type of computer-operated command to verify a transaction. The amended claims are not directed to an improvement in the functioning of a computer, but rather they are directed to improvement of a business process (i.e., verification step performed on a payment device), namely an electronic payment transaction between a user and a merchant, using the existing/conventional 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 Applicant's arguments that the claims amount to significantly more are not persuasive. the claims fail to include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to merely instructions to apply the exception using generic computer components. The claim limitations do not improve another technology or technical field, improve the functioning of a computer itself, apply the abstract idea with, or by use of, a particular machine (not a generic computer, not adding the words "apply it" or words equivalent to "apply the abstract idea", not mere instructions to implement an abstract idea on a computer, adding insignificant extra solution activity to the judicial exception, generally linking the user of the judicial exception to a
particular technological environment or field of use), effects a transformation or reduction of a
particular article to a different state or thing, or adds meaningful limitations that amount to more
than generally linking the use of the abstract idea to a particular technological environment.
Mere instructions to apply an exception using generic computer components cannot provide an
inventive concept. Hence, the rejection is maintained.
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 comprises the payment terminal executing the program on the microprocessor of the payment terminal to create a request asking the payment device to verify the transaction policy, the request created using a VERIFY APDU (Application Protocol Data Unit) command having data fields which specify the personal information to be verified and the condition of the transaction policy; sign the request using the cryptographic key; and transmit the signed request to the payment device via the contact or contactless communication interfaces; and the executing the program on the microprocessor of the payment device to authenticate the request using the cryptographic key; read from the non-volatile memory of the payment device the personal information specified in the request; verify the condition of the transaction policy using the personal information; create a validation or invalidation message in response to the VERIFY APDU command, validating or not compliance with the transaction policy; and transmit the validation or invalidation message to the payment terminal via the contact or contactless communication interfaces.
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: 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; 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….. the request created using a VERIFY APDU (Application Protocol Data Unit) command having data fields which specify the personal information to be verified and the condition of the transaction policy; sign the request using the cryptographic key; and transmit the signed request to the payment device via the contact or contactless communication interfaces; and the executing the program on the microprocessor of the payment device to authenticate the request using the cryptographic key; read from the non-volatile memory of the payment device the personal information specified in the request; verify the condition of the transaction policy using the personal information; create a validation or invalidation message in response to the VERIFY APDU command, validating or not compliance with the transaction policy; and transmit the validation or invalidation message to the payment terminal via the contact or contactless communication interfaces. 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; cryptographic key; VERIFY APDU (Application Protocol Data Unit) command) 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)
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 6, 9, 10, 13-14, 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 6 includes a mutual authentication step; claim 9 also further narrows the verification step; claim 10 on enforcing a transaction step; 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 5, 6, 9, 10, 13-14, 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, 5-6, 9, 10, 13-15, 17, 19, 20, 23-24, 27-28, and 30-32 are rejected under 35 USC 101 as being directed to non-statutory subject matter.
Allowable Subject Matter Over the Prior Art
The following is a statement of reasons for the indication of allowable subject matter: Claim 1 contains allowable subject matter. As per claim 1, the closest prior art of record (US20210097523A1 to Phillips) which discloses Device-based transaction authorization for identity verification to provide access to restricted goods or services. The other closest prior arts, US20080027865A1 to Usui; US20210065267A1to Smith; each teaches similar features of the claimed invention. The closest cited prior arts, however, does not teach or suggest, alone or in combination, the particular ordered combination of steps or elements as recited in the independent claims 1, 15, 20, and 24, specifically the combination of steps of, “wherein the verification step comprises the payment terminal executing the program on the microprocessor of the payment terminal to create a request asking the payment device to verify the transaction policy, the request created using a VERIFY APDU (Application Protocol Data Unit) command having data fields which specify the personal information to be verified and the condition of the transaction policy;…verify the condition of the transaction policy using the personal information; create a validation or invalidation message in response to the VERIFY APDU command,” as recited in claims 1, 15, 20, and 24. The missing claimed elements/features cannot be found in a reasonable number of reference(s). Yet even if the missing claimed elements/features were found in a reasonable number of references, a person of ordinary skill in the art at the time the invention was made would not have been motivated to include these missing elements in an embodiment in the Philips. Hence, the claims are allowable over the cited prior art. Dependent claims are also allowable for the same reason(s) described above.
Conclusion
THIS ACTION IS MADE FINAL, necessitated by amendment. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YIN Y CHOI whose telephone number is (571)272-1094 or yin.choi@uspto.gov. The examiner can normally be reached on M-F 7:30 - 5:30pm EST.
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/YIN Y CHOI/Examiner, Art Unit 3699 7/31/2026
/NILESH B KHATRI/Primary Examiner, Art Unit 3699
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