DETAILED ACTION
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 .
Status of Claims
This action is in reply to the communication(s) filed on 03 September 2025.
Claims 1, 7-8, 12, 18-19 and 23 have been amended.
Claim(s) 1-23 is/are currently pending and have been examined.
Response to Arguments
Applicant's arguments filed 03 September 2025 have been fully considered but they are not persuasive.
Claim Rejections – 35 U.S.C. §112
The claims have been amended to address the objection(s)/rejection(s) presented in the prior Office Action. Accordingly, Examiner withdraws the corresponding objection(s)/rejection(s).
Claim Interpretation
Examiner withdraws their claim interpretation regarding the words “including” and “comprising” based on the entered amendments.
Examiner has amended their claim interpretation to recite a less restrictive interpretation of “Examiner notes that “connection information” may include any network wide unique ID for a user.”
Claim Rejections – 35 U.S.C. §101
Step 2A Prong One
Applicant argues on page 11, that the noted steps “clearly exceed the scope of what can be mentally or manually processed by a human within the short timeframe of an online transaction and that such steps do not merely represent an organization of human activity, but rather a technical implementation that improves the architecture and operation of a computer system. Examiner respectfully disagrees. Examiner first notes the following regarding mental performance: “Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015)” (See MPEP 2106.05(f)). The use of generic computing components in the instant application to increase the speed or efficiency of the recited judicial exception does not afford the claim eligibility.
Applicant argues that the claims clearly would not grant a monopoly over the alleged abstract idea. Examiner respectfully disagrees and therefore does not represent certain methods of organizing human activity. Examiner respectfully disagrees. The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 ("We have described the concern that drives this exclusionary principal as one of pre-emption"). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that "patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity." Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, the attempt to limit the breadth of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent's claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 2015 U.S. App. LEXIS 9855, 17-18 (Fed. Cir. June 12, 2015).
Step 2A Prong Two
Applicant argues that the present application solves a clear technical problem of data staleness which leads to payment failures and a waste of computing resources. Examiner respectfully disagrees. The MPEP clarifies how additional elements can impose meaningful limits on a recited judicial exception:
“Consideration of improvements is relevant to the eligibility analysis regardless of the technology of the claimed invention. That is, the consideration applies equally whether it is a computer-implemented invention, an invention in the life sciences, or any other technology. See, e.g., Rapid Litigation Management v. CellzDirect, Inc., 827 F.3d 1042, 119 USPQ2d 1370 (Fed. Cir. 2016), in which the court noted that a claimed process for preserving hepatocytes could be eligible as an improvement to technology because the claim achieved a new and improved way for preserving hepatocyte cells for later use, even though the claim is based on the discovery of something natural. Notably, the court did not distinguish between the types of technology when determining the invention improved technology. However, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology.” (MPEP 2106.05(a)(II))
Drawing attention to the emphasized section, an improvement in the judicial exception itself is not an improvement in technology. In the current case, regardless of whether or not applicant’s invention improves the recited judicial exception, improving a method, algorithm, or process of a judicial exception absent of any technological modification, would be an improvement to the judicial exception (e.g. via the improvement in the efficiency of the judicial exception), but does not improve computers or technology.
Applicant argues that the step with performs a validity determination operation enhances the data security of the system thus providing a technical improvement of reducing the processing load on the card company server. Examiner respectfully disagrees. “The analysis under Step 2A Prong Two is the same for all claims reciting a judicial exception, whether the exception is an abstract idea, a law of nature, or a natural phenomenon (including products of nature). Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations introduced in subsection I supra, and discussed in more detail in MPEP §§ 2106.04(d)(1), 2106.04(d)(2), 2106.05(a) through (c) and 2106.05(e) through (h).” See MPEP 2106.04(d)(II) (emphasis added). Examiner notes that the section(s) of the claim(s) which applicant cites were and/or are elements which cause the claim to recite an abstract idea. As cited, additional elements which could cause integration into a practical application must be those recited beyond the judicial exception (emphasis added). The elements which recite the judicial exception cannot also serve to integrate the judicial exception into a practical application.
Step 2B
Applicant argues that the Office Action dated 03 June 2025 argued on page 11 that the use of card replacement numbers or data collection might be conventional. This is incorrect, rather the noted steps are found to be insignificant extra-solution activity and supported as conventional through citation to the MPEP, not the general use of card replacement numbers.
Applicant argues that the novel combination of features represents significantly more than any abstract idea and due to the lack of prior art rejection represents an inventive concept that goes beyond well-known, routine, or conventional activities. Examiner respectfully disagrees. Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. See MPEP § 2106.05(I). Although the second step in the Alice/Mayo framework is termed a search for an “inventive concept,” the analysis is not an evaluation of novelty or non-obviousness, but rather, a search for an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself. Furthermore, tests for whether an element is conventional under Step 2B only applies to the additional elements recited and not to the abstract idea present within the claims. Improvement of technology by virtue of novelty or non-obviousness is not a test of eligibility.
Claim Interpretation
Examiner notes that “connection information” may include any network wide unique ID for a user.
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.
Step 1 of the 101 Analysis:
Claims 1-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recites an apparatus, method, and non-transitory computer-readable recording medium storing commands for supporting payment. These are a machine, process, and article of manufacture which are within the four categories of statutory subject matter.
Step 2A Prong 1 of the 101 Analysis:
The following limitations and/or similar versions are recited in claim(s) 1, 12 and 23:
Claim(s) 1, 12 and 23:
“acquire first card information of the user determined based on the connection information…, the first card information including one or more card replacement numbers and status information of each of one or more cards issued to the user, each of the one or more card replacement numbers being a value generated based on a card number of each of the one or more cards issued to the user, the card number of each of the one or more cards being a value stored…at a time point of issuing of each of the one or more cards, and the status information of each of the one or more cards indicating a current status of the one or more cards including normality, extinction due to period expiration, extinction due to cancelation, suspension due to loss,”
“generate, based on the status information of each of the one or more cards, second card information by excluding invalid cards from the one or more cards issued to the user included in the first card information,”
“transmit the second card information generated…,”
“acquire,…, information indicating a first card used to pay for the order among one or more cards included in the second card information,”
“perform a validity determination operation for determining whether the connection information acquired from the server of the card member store matches connection information to be transmitted to the card company server,”
“transmit a card replacement number for the first card and connection information after performing the validity determination operation…,”
“acquire,…, approval information for approving payment for the order by the first card,”
“pay for the order based on the approval information.”
These limitations, as drafted, are a process that, under its broadest reasonable interpretation, describes Fundamental Economic Principles or Practices or Commercial or Legal Interactions but for the recitation of generic computer components. That is, other than reciting “a server”, “a terminal”, “at least one processor”, at least one memory” or “a non-transitory computer-readable recording medium” nothing in the claims’ elements precludes the steps from practically describing Fundamental Economic Principles or Practices or Commercial or Legal Interactions. For example, but for the recited computer language, the limitations in the context of this claim describes Mitigating Risk or could reasonably describe Marketing or Sales Activities or Behaviors. Mitigating Risk is described when performing card number replacement. Marketing or Sales Activities or Behaviors is described when performing payment utilizing a replacement card number. If a claim limitations, under their broadest reasonable interpretation, describes Fundamental Economic Principles or Practices or Commercial or Legal Interactions but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Activity” grouping of abstract ideas.
Accordingly, the claims recite an abstract idea.
Step 2A Prong 2 of the 101 Analysis:
This judicial exception is not integrated into a practical application. In particular, the independent claim(s) recite the following (or similar) additional elements:
Claim(s) 1, 12 and 23:
“acquire, from a server of the card member store, connection information generated based on a resident registration number of the user and order information for an order of the user,”
“transmit the connection information to a card company server,”
“…from the card company server…"
“…in the card company server…”
“…to a terminal of the user,”
“…from the terminal of the user…”
“…to the card company server,”
“…from the card company server…”
Claim 1:
“at least one processor;”
“at least one memory configured to store commands which, when executed by the at least one processor, cause the at least one processor to perform an operation, wherein the at least one processor is configured to, according to the commands, to perform:”
Claim 12:
“the method being performed in an apparatus including at least one processor and at least one memory storing commands executed by the at least one processor, the method comprising:”
Claim 23:
“A non-transitory computer-readable recording medium for recording commands performed on a computer in order to support a payment of a user in a card member store, wherein when the commands are executed by at least one processor, the at least one processor is configured to:”
The computer components (servers, terminal, processor, memory, and non-transitory computer-readable recording medium) are recited at a high level of generality (i.e. as generic servers, a generic terminal, a generic processor, and generic storages) such that it amounts to no more than mere instructions to implement the judicial exception on a computer or by using a computer merely as a tool to perform an existing process. These element(s) in combination do not add anything that is not already present when the steps are considered separately. Simply implementing an abstract idea on a computer as a tool to perform an existing process is not indicative of integration into a practical application (See MPEP § 2106.05(f).)
The acquiring and transmitting step(s) are recited at a high-level of generality (i.e., as generally acquiring and generally transmitting) such that they amounts to no more than mere data gathering which is adding insignificant extra-solution activity. These element(s) in combination do not add anything that is not already present when the steps are considered separately. Simply adding insignificant extra-solution activity is not indicative of integration into a practical application (See MPEP § 2106.05(g).)
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The independent claims are directed to an abstract idea.
Step 2B of the 101 Analysis:
The claims do not 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 identified in Step 2A Prong 2 (if any) amount to no more than mere instructions to implement the judicial exception on a computer or no more than mere data gathering or data outputting which only adds insignificant extra solution activity to the judicial exception. Accordingly, the Examiner:
• Carries over their identification of the additional element(s) in the claim from Step 2A Prong Two;
• Carries over their conclusions from Step 2A Prong Two on the considerations discussed in MPEP §§ 2106.05(a) - (c), (e) (f) and (h):
• Re-evaluates any additional element or combination of elements that was considered to be insignificant extra-solution activity per MPEP § 2106.05(g), because if such re-evaluation finds that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that the additional element is no longer considered to be insignificant.
These element(s) in combination do not add anything that is not already present when the steps are considered separately. Adding insignificant extra-solution activity cannot provide an inventive concept when the activities are well-understood routine and conventional. The courts have recognized the following computer functions as well-understood, routine, and conventional functions when they are claimed in a merely generic manner:
(for acquiring/transmitting various data) Receiving or transmitting data over a network, (See MPEP § 2106.05(d)(II)).
The independent claims are not patent eligible.
Dependent claims 2-11 and 13-22 recite processes similar to the abstract idea noted in the independent claims because they further narrow the independent claim(s) which recite one or more judicial exceptions. Accordingly, these claim elements do not serve to confer subject matter eligibility to the claims since they recite abstract ideas.
The claims are not patent eligible.
Examiner’s Note
Examiner notes that a search was performed but did not result in a prior art or combination of prior art that would render the independent claims non-obvious.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Rezayee et al. (US 11,893,581 B1) discloses the use of temporary tokens for payment transactions using electronic transaction cards.
Massie et al. (US 11,756,043 B1) discloses identifying expired payment card information and updating said payment card information.
Suh et al. (US 2020/0051074 A1) discloses assigning token IDs to cards and usage of public keys with blockchain with said tokens.
Arora et al. (US 2020/0167753 A1) discloses generating tokens for payment account credentials during a transaction request.
Florio (GB 2594785 A) discloses assigning deposit tokens used for payment instruction indexing.
Liu et al. (“State of the Art: Secure Mobile Payments”) discloses tokenization framework for payments.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J HILMANTEL whose telephone number is (571)272-8984. The examiner can normally be reached M-F 8:30AM-5:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas can be reached at (571) 270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.H./Examiner, Art Unit 3691
/ABHISHEK VYAS/Supervisory Patent Examiner, Art Unit 3691