DETAILED ACTION
Acknowledgements
The amendment filed 10/8/2025 is acknowledged.
Claims 1-19 are pending.
Claim 19 is withdrawn.
Claims 1-18 have been examined.
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 .
Election/Restrictions
Applicant’s election of Species A in the reply filed on 10/8/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-18 are directed to a method. Therefore, these claims fall within the four statutory categories of invention.
The claims recite determining whether to authorize a request to use funds by calculating a value and comparing it to a value included in the request to determine that they match, which is an abstract idea. Specifically, the claims recite “receiving . . . a use request from a user . . . of the exchange item marketplace . . ., wherein the use request includes first dynamically secure exchange item data associated with an exchange item,” “generating . . . second dynamically secure exchange item data using a dynamic securing function having inputs that includes a marketplace time value, one or more security parameters, and one or more aspects of an exchange item data file associated with the exchange item,” “comparing . . . the first dynamically secure exchange item data with the second dynamically secure exchange item data,” and “when the first dynamically secure exchange item data substantially matches the second dynamically secure exchange item data, authorizing . . . the use request,” which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (MPEP 2106.04 & 2106.04(a)) because the claims describes a process of determining whether a user is authorized to use a payment method based on comparing a value included in the use request with a calculated value to determine whether they match, which is a commercial or legal interaction. The claims are also grouped within the “mental processes” grouping of abstract ideas because they involve evaluating or analyzing information to make a decision about whether or not a user is authorized to use a payment method, which are evaluations and judgments which can practically be performed in the human mind. Accordingly, the claims recite an abstract idea (See MPEP 2106.04(a)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(d)), the additional elements of the claims such as the use of a marketplace server, an exchange item marketplace network, and a user computing device, merely use(s) a computer as a tool to perform an abstract idea. Specifically, these additional elements perform the steps or functions of “receiving . . . a use request from a user . . . of the exchange item marketplace . . ., wherein the use request includes first dynamically secure exchange item data associated with an exchange item,” “generating . . . second dynamically secure exchange item data using a dynamic securing function having inputs that includes a marketplace time value, one or more security parameters, and one or more aspects of an exchange item data file associated with the exchange item,” “comparing . . . the first dynamically secure exchange item data with the second dynamically secure exchange item data,” and “when the first dynamically secure exchange item data substantially matches the second dynamically secure exchange item data, authorizing . . . the use request.” Viewed as a whole, the use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106.05), the additional elements of using a marketplace server, an exchange item marketplace network, and a user computing device to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of determining whether to authorize a request to use funds by calculating a value and comparing it to a value included in the request to determine that they match. As discussed above, taking the claim elements separately, the marketplace server, exchange item marketplace network, and user computing device perform the steps or functions of “receiving . . . a use request from a user . . . of the exchange item marketplace . . ., wherein the use request includes first dynamically secure exchange item data associated with an exchange item,” “generating . . . second dynamically secure exchange item data using a dynamic securing function having inputs that includes a marketplace time value, one or more security parameters, and one or more aspects of an exchange item data file associated with the exchange item,” “comparing . . . the first dynamically secure exchange item data with the second dynamically secure exchange item data,” and “when the first dynamically secure exchange item data substantially matches the second dynamically secure exchange item data, authorizing . . . the use request.” These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of determining whether to authorize a request to use funds by calculating a value and comparing it to a value included in the request to determine that they match. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 2-18 further describe the abstract idea of determining whether to authorize a request to use funds by calculating a value and comparing it to a value included in the request to determine that they match. Specifically, claims 2-5 describe establishing a security parameter and providing it to the user who then uses it to generate a value, which is part of the abstract idea as it only involves providing a value to a user, where the user performs a calculation on the value using an algorithm to obtain a result. Claims 6-10 describe characteristics of the data included in the exchange item data file and characteristics of the security parameters, but do not require any steps or functions to be performed. Claim 11 further describes the calculations performed when generating the second dynamically secure exchange item data, which only involves performing mathematical calculations and is this abstract. Claims 12-17 describes characteristics of the exchange item data file, but do not require and steps or functions to be performed. Claim 18 describes receiving the exchange item data file, which is also part of the abstract idea as it only involves receiving data or information that is used in the calculation of the second dynamically secure exchange item data value. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 2, 6-10, and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Mullen (US 2008/0065555) in view of Vaish, et al. (US 2014/0122331) (“Vaish”).
Regarding claim 1, Mullen discloses a method for execution by a marketplace server of a financial item marketplace network, the method comprises:
receiving, by the marketplace server, a use request from a user computing device of the financial item marketplace network, wherein the use request includes first dynamically secure financial item data associated with a financial item (Mullen ¶¶ 53-54, 65, 112);
generating, by the marketplace server, second dynamically secure financial item data using a dynamic securing function having inputs that includes a marketplace time value, one or more security parameters, and one or more aspects of a financial item data file associated with the financial item (Mullen ¶¶ 53-54, 63, 73, 112-113);
comparing, by the marketplace server, the first dynamically secure financial item data with the second dynamically secure financial item data, when the first dynamically secure financial item data substantially matches the second dynamically secure financial item data, authorizing, by the marketplace server, the use request (Mullen ¶¶ 63, 73, 112-113).
Mullen does not specifically disclose that the financial item is an exchange item.
Vaish discloses that the financial item is an exchange item (Vaish Abstract; ¶ 23).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of Mullen to include the financial item being an exchange item, as disclosed in Vaish, in order to allow for secure transactions using a variety of types of instruments a customer may have (Vaish ¶¶ 4, 21, 23).
Regarding claim 2, Mullen establishing, by the marketplace server, the one or more security parameters for the exchange item (Mullen ¶¶ 53-57).
Regarding claim 6, Mullen in view of Vaish does not specifically disclose that the exchange item data file includes a quantifiable value, a serial number, and issuance information. However, this limitation only describes the content of the data file, and more specifically, describes the type of information the data in the file conveys to a human user. The particular characteristics of the data file described in this limitation are not processed or used by a computer to execute any technical functionality dependent on the specific characteristics. Therefore, this limitation recites nonfunctional descriptive material, which does not serve to differentiate the claims from the prior art. When descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from prior art in terms of patentability. It has been held that where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. [T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate (In re Ngai 367 F.3d 1336, 1339, 70 USPQ2d 1862 (Fed. Cir. 2004); Ex parted Nehls 88 USPQ2d 1883, 1888-1889 (BPAI 2008); In re Lowry, 32 USPQ2d 1031 (Fed. Cir. 1994); MPEP § 2111.05; Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983)).
Therefore, it would have been obvious to one of ordinary skill at the effective filing date of the present application to modify the method of Mullen in view of Vaish to include any type of information in the exchange item data file, because the subjective interpretation of the information does not patentable distinguish the claimed invention.
Regarding 7, Mullen discloses that the one or more security parameters comprises a secret key (Mullen ¶ 53).
Regarding claim 8, Mullen discloses that the one or more security parameters comprises a time interval truncation function (Mullen ¶¶ 55-56).
Regarding claim 9, Mullen discloses that the one or more security parameters comprises a generator algorithm identifier to identify one of a plurality of generator algorithms (Mullen ¶ 111).
Additionally, regarding claims 7-9, these limitations only describe the content of the data file, and more specifically, describe the type of information the data in the file conveys to a human user. The particular characteristics of the data file described in these limitations are not processed or used by a computer to execute any technical functionality dependent on the specific characteristics. Therefore, these limitations recite nonfunctional descriptive material, which does not serve to differentiate the claims from the prior art. When descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from prior art in terms of patentability. It has been held that where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. [T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate (In re Ngai 367 F.3d 1336, 1339, 70 USPQ2d 1862 (Fed. Cir. 2004); Ex parte Nehls 88 USPQ2d 1883, 1888-1889 (BPAI 2008); In re Lowry, 32 USPQ2d 1031 (Fed. Cir. 1994); MPEP § 2111.05; Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983)).
Regarding claim 10, Mullen in view of Vaish does not specifically disclose that the one or more security parameters comprises an arithmetic algorithm identifier to identify one or more of a plurality of arithmetic algorithms. However, this limitation only describes the content of the security parameters, which are data. The particular characteristics of the security parameters described in this limitation are not processed or used by a computer to execute any technical functionality dependent on the specific characteristics. Therefore, this limitation recites nonfunctional descriptive material, which does not serve to differentiate the claims from the prior art. When descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from prior art in terms of patentability. It has been held that where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. [T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate (In re Ngai 367 F.3d 1336, 1339, 70 USPQ2d 1862 (Fed. Cir. 2004); Ex parte Nehls 88 USPQ2d 1883, 1888-1889 (BPAI 2008); In re Lowry, 32 USPQ2d 1031 (Fed. Cir. 1994); MPEP § 2111.05; Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983)).
Therefore, it would have been obvious to one of ordinary skill at the effective filing date of the present application to modify the method of Mullen in view of Vaish to include any type of information in security parameters, because the subjective interpretation of the information does not patentable distinguish the claimed invention.
Regarding claim 12, Mullen discloses that the one or more aspects of the exchange item data file comprises an exchange item identifier (Mullen ¶¶ 54, 112-113).
Regarding claim 13, Mullen discloses that the one or more aspects of the exchange item data file comprises issuer identity (Mullen ¶ 102).
Additionally, regarding claims 12-13, these limitations only describe the content of the aspects of the exchange item data file, and more specifically, describe the type of information the data conveys to a human user. The particular characteristics of the data described in these limitations are not processed or used by a computer to execute any technical functionality dependent on the specific characteristics. Therefore, these limitations recite nonfunctional descriptive material, which does not serve to differentiate the claims from the prior art. When descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from prior art in terms of patentability. It has been held that where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. [T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate (In re Ngai 367 F.3d 1336, 1339, 70 USPQ2d 1862 (Fed. Cir. 2004); Ex parte Nehls 88 USPQ2d 1883, 1888-1889 (BPAI 2008); In re Lowry, 32 USPQ2d 1031 (Fed. Cir. 1994); MPEP § 2111.05; Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983)).
Regarding claims 14, 16, and 17, Mullen in view of Vaish does not specifically disclose that the one or more aspects of the exchange item data file comprises issuance date, exchange item rules, or exchange item use parameters. However, these limitations only describe the content of the aspects of the exchange item data file, and more specifically, describe the type of information the data conveys to a human user. The particular characteristics of the data described in these limitations are not processed or used by a computer to execute any technical functionality dependent on the specific characteristics. Therefore, these limitations recite nonfunctional descriptive material, which does not serve to differentiate the claims from the prior art. When descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from prior art in terms of patentability. It has been held that where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. [T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate (In re Ngai 367 F.3d 1336, 1339, 70 USPQ2d 1862 (Fed. Cir. 2004); Ex parte Nehls 88 USPQ2d 1883, 1888-1889 (BPAI 2008); In re Lowry, 32 USPQ2d 1031 (Fed. Cir. 1994); MPEP § 2111.05; Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983)).
Therefore, it would have been obvious to one of ordinary skill at the effective filing date of the present application to modify the method of Mullen in view of Vaish to include any type of information in aspects of the exchange item data file, because the subjective interpretation of the information does not patentable distinguish the claimed invention.
Regarding claim 15, Mullen discloses that the one or more aspects of the exchange item data file comprises expiration time frame (Mullen ¶¶ 12, 54, 93).
Additionally, this limitation only describes the content of the aspects of the exchange item data file, and more specifically, describes the type of information the data conveys to a human user. The particular characteristics of the data described in this limitation is not processed or used by a computer to execute any technical functionality dependent on the specific characteristics. Therefore, this limitation recites nonfunctional descriptive material, which does not serve to differentiate the claims from the prior art. When descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from prior art in terms of patentability. It has been held that where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. [T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate (In re Ngai 367 F.3d 1336, 1339, 70 USPQ2d 1862 (Fed. Cir. 2004); Ex parte Nehls 88 USPQ2d 1883, 1888-1889 (BPAI 2008); In re Lowry, 32 USPQ2d 1031 (Fed. Cir. 1994); MPEP § 2111.05; Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983)).
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Mullen in view of Vaish as applied to claim 1 above, and further in view of Varadarajan (US 8,930,273).
Regarding claim 3, Mullen in view of Vaish does not specifically securely providing, by the marketplace server, the one or more security parameters to the user computing device.
Varadarajan discloses securely providing, by the marketplace server, the one or more security parameters to the user computing device (Varadarajan ¶¶ 8:64-40).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of Mullen in view of Vaish to include securely providing, by the marketplace server, the one or more security parameters to the user computing device, as disclosed in Varadarajan, in order to allow a user device to securely generate a dynamic value for secure transactions (Varadarajan ¶¶ 2:63-3:14; 3:18-59).
Regarding claim 4, Mullen discloses the method of claim 3 further comprises: generating, by the user computing device, the first dynamically secure exchange item data using the dynamic securing function having inputs that include a user time value, the one or more security parameters, and one or more aspects of a copy of the exchange item data file when held by the user computing device (Mullen ¶¶ 53, 111-112).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Mullen in view of Vaish and Varadarajan as applied to claim 4 above, and further in view of Sahota (US 2005/0043997).
Regarding claim 5, Mullen in view of Vaish and Varadarajan does not specifically disclose that the generating the first dynamically secure exchange item data further comprises executing, as part of the dynamic securing function, a generator function of a plurality of generator algorithms on the user time value and the one or more security parameters to produce an intermediate resultant and executing an arithmetic function of a plurality of arithmetic functions on the intermediate resultant and the one or more aspects of the copy of the exchange item data file to produce the first dynamically secure exchange item data.
Sahota discloses that the generating the first dynamically secure exchange item data further comprises: executing, as part of the dynamic securing function, a generator function of a plurality of generator algorithms on the user time value and the one or more security parameters to produce an intermediate resultant (Sahota ¶¶ 29, 38); and executing an arithmetic function of a plurality of arithmetic functions on the intermediate resultant and the one or more aspects of the copy of the exchange item data file to produce the first dynamically secure exchange item data (Sahota ¶¶ 29, 38).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of Mullen in view of Vaish and Varadarajan to include executing, as part of the dynamic securing function, a generator function of a plurality of generator algorithms on the user time value and the one or more security parameters to produce an intermediate resultant, and executing an arithmetic function of a plurality of arithmetic functions on the intermediate resultant and the one or more aspects of the copy of the exchange item data file to produce the first dynamically secure exchange item data, as disclosed in Sahota, in order to reduce fraud associated with skimming by allowing for secure generation of dynamic verification values (Sahota ¶¶ 5-8).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Mullen in view of Vaish as applied to claim 1 above, and further in view of Sahota (US 2005/0043997).
Regarding claim 11, Mullen in view of Vaish does not specifically disclose that the generating the second dynamically secure exchange item data comprises: executing, as part of the dynamic securing function, a generator function of a plurality of generator algorithms on the marketplace time value and the one or more security parameters to produce an intermediate resultant, and executing an arithmetic function of a plurality of arithmetic functions on the intermediate resultant and the one or more aspects of the exchange item data file to produce the second dynamically secure exchange item data.
Sahota discloses that the generating the second dynamically secure exchange item data comprises: executing, as part of the dynamic securing function, a generator function of a plurality of generator algorithms on the marketplace time value and the one or more security parameters to produce an intermediate resultant (Sahota ¶¶ 29, 38), and executing an arithmetic function of a plurality of arithmetic functions on the intermediate resultant and the one or more aspects of the exchange item data file to produce the second dynamically secure exchange item data (Sahota ¶¶ 29, 38).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of Mullen in view of Vaish to include executing, as part of the dynamic securing function, a generator function of a plurality of generator algorithms on the marketplace time value and the one or more security parameters to produce an intermediate resultant, and executing an arithmetic function of a plurality of arithmetic functions on the intermediate resultant and the one or more aspects of the exchange item data file to produce the second dynamically secure exchange item data, as disclosed in Sahota, in order to reduce fraud associated with skimming by allowing for secure generation of dynamic verification values (Sahota ¶¶ 5-8).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Mullen in view of Vaish as applied to claim 1 above, and further in view of Cedeno (US 8,733,637).
Regarding claim 18, Mullen in view of Vaish does not specifically disclose receiving, by the marketplace server, the exchange item data file from an issuing server of the exchange item marketplace network.
Cedeno discloses receiving, by the marketplace server, the exchange item data file from an issuing server of the exchange item marketplace network (Cedeno 4:1-49).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of Mullen in view of Vaish to include receiving, by the marketplace server, the exchange item data file from an issuing server of the exchange item marketplace network, as disclosed in Cedeno, in order to allow gift card buyers more flexibility in using purchases gift cards (Cedeno 1:64-2:30).
Conclusion
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/Mohammad A. Nilforoush/Primary Examiner, Art Unit 3697