DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 9, 2025 has been entered.
Response to Amendment
The amendment filed on April 9, 2025 has been entered. Applicant has: amended claims 15, 21, 25 and 27; and cancelled claims 17 and 23. Claims 15, 18-21 and 24-28 remain pending, where claim 28 has been withdrawn from consideration as being directed to a non-elected invention. Accordingly, claims 15, 18-21 and 24-27 have been examined and currently stand rejected.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 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.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Claim Interpretation
Intended Use/Result Language:
The claim 15, 21 and 27 phrase which recites “to authorize the point-of-sale terminal to perform the payment transaction” is merely a recited intended use/result of why the user’s terminal sends the security code and the trust card related identifier to the point-of-sale terminal.
These phrases are given little to no patentable weight because the limitation, or portion thereof, does not claim the functions as being positively recited actions or functions, and/or they do not add any meaning or purpose to the associated manipulative step(s). See MPEP 2103 C and 2111.04. Simply because the limitation recites something as being “for … [performing a specific functionality]”, etc. does not mean that the functions are required to be performed, or are actually performed.
Claim Scope:
Claim 15 recites, in part, “wherein the point-of-sale terminal is configured to perform the payment transaction based on the authorization.” Examiner notes that claim 15 is directed to actions/steps performed by the user’s terminal, and this “wherein” clause is describing actions attributed to the point-of-sale terminal. However, the “wherein” clause is not positively recited (e.g., “configuring the point-of-sale terminal to […]”, or “performing by the point-of-sale terminal […]”), and it fails to affect how any of the other steps in the claim are performed, accordingly this clause fails to further limit the claimed invention.
Claim 21 recites, in part, “An apparatus comprising at least one processor, a memory and a computer program code in the memory, the computer program code being configured, when run in the at least one processor, to cause the apparatus to: […].” Accordingly, the scope of claim 21 covers the structure of the apparatus and the steps performed by the apparatus and its components. Claim 21 also recites “wherein the point-of-sale terminal is configured to perform the payment transaction based on the authorization.” Examiner notes that this “wherein” limitation is outside the scope of the claimed apparatus since this limitation is directed to a step, or steps, performed by the point-of-sale terminal (i.e., not the apparatus).
Claim 27 recites, in the last limitation, “wherein the point-of-sale terminal is configured to perform the payment transaction based on the authorization.” Examiner notes that claim 27 is directed to actions/steps performed by the user’s terminal (or its processors), and this “wherein” clause is describing actions attributed to the point-of-sale terminal. However, the “wherein” clause is not positively recited (e.g., “configuring the point-of-sale terminal to […]”, or “performing by the point-of-sale terminal […]”), and it fails to affect how any of the other steps in the claim are performed, accordingly this clause fails to further limit the claimed invention.
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 15, 18-21 and 24-27 are rejected under 35 U.S.C. 101 because the claimed invention recites and is directed to a judicial exception to patentability (i.e., an abstract idea) and does not provide an integration of the recited abstract idea into a practical application nor include an inventive concept that is “significantly more” than the recited abstract idea to which the claim is directed. MPEP §2106.
In determining subject matter eligibility in an Alice rejection under 35 U.S.C. §101, it is first determined at Step 1 whether the claims are directed to one of the four statutory categories of an invention (i.e., a process, a machine, a manufacture, or a composition of matter). MPEP §2106.03. Here, it is determined that the claims are directed to the statutory category of a process (claims 15, 18-20), a machine (claims 21, 24-26) and a manufacture (claim 27), where the machine and manufacture limitations are substantially directed to the subject matter of the process. Therefore, we proceed to Step 2A, Prong 1. MPEP §2106. Under a Step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more enumerated categories of patent ineligible subject matter that amounts to a judicial exception to patentability. MPEP §2106.04. Independent Claim 15, the method claim, is selected as being representative of the independent claims in the instant application. Claim 15 recites:
A method for performing a payment transaction in a secure manner by a user's terminal, the method comprising:
receiving by a user interface in the user's terminal, authentication by a user for performing a payment transaction in a secure manner by the user's terminal;
retrieving data of a trust card of a payment application from a safe memory area in the user's terminal, the data of the trust card comprising at least a trust card related identifier;
forming a security code; and
sending by the user's terminal the security code and the trust card related identifier to a point-of-sale terminal over a Near Field Communication (NFC) protocol connection;
receiving by the user's terminal random data from the point-of-sale terminal over the Near Field Communication (NFC) protocol connection;
signing by the user's terminal the random data with a private key of the trust card to form a signature;
sending the signature to the point-of-sale terminal over the Near Field Communication (NFC) protocol connection to authorize the point-of-sale terminal to perform the payment transaction; and
wherein the point-of-sale terminal is configured to perform the payment transaction based on the authorization.
Here, the claims are directed to the abstract idea, or combination of abstract ideas, of collecting and sending authentication and payment information as part of a payment transaction. This concept/abstract idea, which is identified in the bolded sections seen above, falls within the Certain Methods of Organizing Human Activity grouping because it describes a fundamental economic practice (e.g., validating a user attempting to make a payment and collecting payment information). The tying of this concept to a particular environment (e.g., a user’s terminal, a “safe memory area” in the user’s terminal) fails to move the claims beyond a general link of the use of the abstract idea in a particular environment. Accordingly, it is determined that the claims recite an abstract idea since they fall within one or more of the three enumerated categories of patent ineligible subject matter. MPEP §2106.04. Furthermore, the Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F .3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an "abstract idea" for which computers are invoked merely as a tool. See id. at 1335-36. Here, it is clear that the claim(s) focus on an abstract idea, and not on any improvement to technology and/or a technical field. It is further noted that, the performance of the one or more process steps using a generic computer component (e.g., a user’s terminal, a processor, a memory, etc.) does not preclude the claim limitation(s) from being in the certain methods of organizing human activity grouping.
Since it is determined that the claim(s) contain a judicial exception, it must then be determined, under Step 2A, Prong 2, whether the judicial exception is integrated into a practical application of the exception. MPEP §2106.04. In order to make this determination, the additional element(s), or combination of elements, are analyzed to determine if the claim as a whole integrates the recited judicial exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.
Here, claim 15 recites the additional elements of: a user's terminal; a user interface in the user’s terminal; a safe memory area in the user’s terminal; and an Near Field Communication (NFC) protocol connection. Claim 21 recites the additional elements of: an apparatus comprising at least one processor, a memory and a computer program code in the memory; a user interface of the apparatus; a safe memory area in the apparatus; and an Near Field Communication (NFC) protocol connection. Claim 27, like claim 15, also recites the additional elements of: a user's terminal; a user interface in the user’s terminal; a safe memory area in the user’s terminal; and an Near Field Communication (NFC) protocol connection. The user’s terminal, user interface, safe memory area, apparatus, processor and memory are all recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception, or a portion thereof, using a generic computer component and/or device. See MPEP 2106.05(f). Examiner finds no indication that the computer component(s) itself/themselves is/are improved, or that there is an improvement to some other technology. Examiner finds no indication in the disclosure, that the operations recited in the independent claims require any specialized computer hardware or other inventive computer components, i.e., a particular machine, invoke any allegedly inventive programming, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.").
As per the sending and receiving of data over an NFC protocol connection, Examiner contends that the use of the NFC protocol connection is recited at a high level of generality. As currently recited, the sending and receiving of data over an NFC protocol connection is merely linking the abstract idea to a particular environment (e.g., an environment that uses near field communications). Accordingly, this additional element does not apply the abstract idea in a meaningful way beyond merely linking it to a
particular technological environment.
Examiner contends that the additional elements identified above do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. They do not transform or reduce a particular article to a different state or thing. They do not apply the abstract idea in a meaningful way beyond merely linking it to a particular technological environment. Looking at the elements as a combination does not add anything more than the elements analyzed individually. Examiner further notes that even though the claims may not preempt all forms of the abstraction, this alone, does not make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015).
Under the Step 2B analysis, it is determined whether the recited additional elements amount to something “significantly more” than the recited abstract idea to which the claims are directed (i.e., provide an inventive concept). MPEP §2106.05. As discussed above with respect to integration of the abstract idea into a practical application, the additional element(s) of using various computing components (e.g., a user’s terminal, a user interface, a processor, a memory, etc.) to implement the abstract idea amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. That is, simply implementing the abstract idea on a generic computer or merely using a computer as a tool to perform an abstract idea cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
As per the sending and receiving of data over an NFC protocol connection, Examiner contends that generally linking the abstract idea to a particular environment is not indicative of an inventive concept. Accordingly, taken alone, the additional elements do not amount to significantly more than a judicial exception. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually.
Therefore, independent claims 15, 21 and 27 are rejected under 35 U.S.C. §101 and are not patent eligible. Dependent claims 18-20 and 24-26 when analyzed are held to be patent ineligible under 35 U.S.C. §101 because the additional recited limitation(s) fail to establish that the claim(s) is/are not directed to an abstract idea. Dependent claims 18 and 24 further refine the abstract idea by describing the displaying, storing, and adjusting of payment related information. These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 19 and 25 further refine the abstract idea by further describing data involved in the authentication of the user. These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 20 and 26 further refine the abstract idea by describing how the security code is generated. These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, the dependent claims are also not patent eligible. Accordingly, it is determined that all claims are directed to non-statutory subject matter under 35 U.S.C. 101 and are ineligible.
Claim Rejections - 35 USC § 103
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 pre-AIA 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 15, 18-19, 21, 24-25 and 27 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Cox (US 2009/0104888 A1) in view of Hammad et al. (US 2012/0136796 A1) (“Hammad”).
Regarding Claims 15, 21 and 27: Cox discloses:
Claims 15: A method for performing a payment transaction in a secure manner by a user's terminal, the method comprising:
Claim 21: An apparatus comprising at least one processor, a memory and a computer program code in the memory, the computer program code being configured, when run in the at least one processor, to cause the apparatus to (See at least Cox [0065]; Fig. 3. at least one processor = wireless-device controller; memory = memory; computer program code = software stored in memory):
Claim 27: A non-transitory computer program product for making a payment, the computer program product comprising computer software code stored on a non-volatile computer-readable medium, the computer software code, when run in at least one processor, causing a user's terminal to (See at least Cox [0065]; Fig. 3):
receiving by a user interface in the user's terminal, authentication by a user for performing a payment transaction in a secure manner by the user's terminal (See at least Cox [0067-0068] “The display device 380 and the input device 382 may be used to request and receive a password, PIN, biometric feature, etc, in order to gain access to information within the mobile wallet 376 and/or in order to transmit account information and/or passwords to a POS device 110.”.);
retrieving data of a trust card of a payment application from a safe memory area in the user's terminal, the trust card comprising at least a trust card related identifier (See at least Cox [0035]; [0053-0054]; [0068]; [0075]. Where a user’s terminal/apparatus (i.e., mobile device) retrieves data of a trust card (i.e., information related to a payment vehicle) of a payment application (i.e., of a mobile wallet) from a safe memory area in the user's terminal (i.e., from a memory area of the mobile device. Examiner considers the memory area of the mobile device, described by Cox, to be “safe” since a password/pin/biometric feature/etc. is needed in order to gain access to this area.), the data of the trust card (i.e., the information related to the payment vehicle) comprising at least a trust card related identifier (i.e., an account number, e.g., a PAN).);
forming a security code (See at least Cox [0044]; [0060]; [0074]; [0078]. Where the user’s terminal/apparatus (i.e., mobile device) forms (i.e., generates) a security code (i.e., password, e.g., onetime password).); and
sending by the user's terminal the security code and the trust card related identifier to a point-of-sale terminal over a Near Field Communication (NFC) protocol connection (See at least Cox [0049]; [0075-0077]; [0080-0082]. Cox discloses sending by the user’s terminal/apparatus (i.e., mobile device) the security code (i.e., password) and the trust card related identifier (i.e., account number, e.g., PAN) to a point-of-sale terminal (i.e., to a POS device) over a Near Field Communication (NFC) protocol connection (i.e., through NFC transponders).).
Cox further indicates that since transmissions involving the account information include sensitive financial data such as account numbers, a cryptography module may also be provided to allow encryption of data sent and received by the mobile device via the NFC module. Cox [0066]. However, Cox does not explicitly disclose, but Hammad teaches:
receiving by the user's terminal random data from the point-of-sale terminal over the Near Field Communication (NFC) protocol connection (See at least Hammad [0070]; [0131-0132]; [0142]; Fig. 12 Step P7. Hammad teaches receiving by the user's terminal (i.e., mobile device) random data (i.e., a nonce) from the point-of-sale terminal (i.e., from the merchant access device) over the Near Field Communication (NFC) protocol connection (i.e., over the near field communications connection).);
signing by the user's terminal the random data with a private key of the trust card to form a signature (See at least Hammad [0132]; [0135]. Hammad teaches signing by the user's terminal (i.e., by the mobile device) the random data (i.e., the nonce) with a private key of the trust card (i.e., with a consumer’s private key) to form a signature.);
sending the signature to the point-of-sale terminal over the Near Field Communication (NFC) protocol connection to authorize the point-of-sale terminal to perform the payment transaction (See at least Hammad [0070]; [0132]; [0135]; [0142-0143]; [0148]; Fig. 12 Step P13. Hammad teaches sending the signature (i.e., the signed nonce) to the point-of-sale terminal (i.e., to the merchant access device) over the Near Field Communication (NFC) protocol connection (i.e., over the near field communications connection) to authorize the point-of-sale terminal to perform the payment transaction (i.e., to authorize the merchant access device to process the transaction).); and
wherein the point-of-sale terminal is configured to perform the payment transaction based on the authorization (See at least Hammad [0143-0146]; [0148]; Fig. 13 steps P14-P15; Fig. 14 step P16. Hammad teaches wherein the point-of-sale terminal (i.e., the merchant access device) is configured to perform the payment transaction (e.g., by generating and/or sending an authorization request message to the payment processing network) based on the authorization.).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Cox’s method of using a cryptography module to encrypt data sent and received by the mobile device, to include the teachings of Hammad, in order to maintain confidentiality of transmitted data and to secure the transaction against replay attacks (Hammad [0132]).
Regarding Claims 18 and 24: The combination of Cox and Hammad discloses the method according to claim 15 and the apparatus according to claim 21. Cox further discloses:
displaying, by the user's terminal, payment data to the user (See at least Cox [0033]; [0054]; [0077]; [0082]. Where payment data (i.e., information related to the transaction(s), e.g., a transaction history) is displayed by the user’s terminal (i.e., mobile device) to the user (e.g., when the user is provided with an electronic receipt).),
storing the payment data on the safe memory area (See at least Cox [0033]; [0077]; [0082]. Where the payment data (i.e., information related to the transaction(s)) is stored on the safe memory area (i.e., in the memory, e.g., when the electronic receipt is stored).), and
adjusting a payment limit in the safe memory area according to the payment data (See at least Cox [0050]; [0058]. Where a payment limit (i.e., balance information, e.g., a current balance level) in the safe memory area (i.e., in the mobile wallet stored in memory) is adjusted (i.e., updated) according to the payment data (i.e., according to the information related to the transaction(s), e.g., transaction history).).
Regarding Claim 19: The combination of Cox and Hammad discloses the method according to claim 15. Cox further discloses:
receiving, by the user's terminal, a pin code entered by a user of the user's terminal (See at least Cox [0067-0068] “The display device 380 and the input device 382 may be used to request and receive a password, PIN, biometric feature, etc, in order to gain access to information within the mobile wallet 376 and/or in order to transmit account information and/or passwords to a POS device 110.”.); and
using the pin code as the authentication by the user (See at least Cox [0067-0068] “The display device 380 and the input device 382 may be used to request and receive a password, PIN, biometric feature, etc, in order to gain access to information within the mobile wallet 376 and/or in order to transmit account information and/or passwords to a POS device 110.”.).
Regarding Claim 25: The combination of Cox and Hammad discloses the apparatus according to claim 21. Cox further discloses the memory comprising computer program code configured, when run in the at least one processor, to cause the apparatus to:
receive a pin code entered by the user on the user interface of the apparatus (See at least Cox [0067-0068] “The display device 380 and the input device 382 may be used to request and receive a password, PIN, biometric feature, etc, in order to gain access to information within the mobile wallet 376 and/or in order to transmit account information and/or passwords to a POS device 110.”.); and
use the pin code as the authentication by the user (See at least Cox [0067-0068] “The display device 380 and the input device 382 may be used to request and receive a password, PIN, biometric feature, etc, in order to gain access to information within the mobile wallet 376 and/or in order to transmit account information and/or passwords to a POS device 110.”.).
Claims 20 and 26 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Cox in view of Hammad, as applied above, and further in view of Akiyama et al. (US 5,428,684 A) (“Akiyama”).
Regarding Claims 20 and 26: The combination of Cox and Hammad discloses the method according to claim 15 and the apparatus according to claim 21. Cox further discloses receiving, by the user's terminal, a password entered by a user of the user's terminal (See at least Cox [0067-0068] “The display device 380 and the input device 382 may be used to request and receive a password, PIN, biometric feature, etc, in order to gain access to information within the mobile wallet 376 and/or in order to transmit account information and/or passwords to a POS device 110.”.).
Cox further discloses that the user’s terminal/apparatus (i.e., mobile device) can be used to form (i.e., generate) the security code (i.e., password, e.g., onetime password). Cox [0044]; [0060]; [0074]; [0078]. Cox also expresses a desire to use encryption when sending or receiving sensitive financial data. Cox [0066]. However, Cox does not explicitly disclose combining the password and a secret of the payment application to form the security code. Akiyama, on the other hand, teaches combining the password and a secret of the payment application to form the security code (See at least Akiyama Col. 6 lines 44-68; Col. 8 lines 1-11. Where the password (i.e., Password (PW)) and a secret of the payment application (i.e., a parameter, e.g., the first parameter) are combined (i.e., via the use of an operating function, e.g., by addition) to form the security code (i.e., the result).). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Cox’s method of using a mobile wallet application to generate a onetime password, to include the teachings of Akiyama, in order to identify and access a session key from the memory of the user device that corresponds to the generated result (Akiyama Col. 7 lines 29-45; Col. 8 lines 23-39).
Response to Arguments
Claim Rejections – 35 U.S.C. § 112, first paragraph
Claims 17 and 23 were rejected under 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. Applicant has cancelled claims 17 and 23 rendering the prior rejections moot.
Claim Rejections – 35 U.S.C. § 112, second paragraph
Claims 23 and 25 were rejected under 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite. Applicant has canceled claim 23, accordingly the rejection on claim 23 is now moot. Applicant’s amendments to claim 25 have addressed the previously cited issues, accordingly the 35 U.S.C. 112, second paragraph, rejection on claim 25 is withdrawn.
Claim Rejections – 35 U.S.C. § 101
Applicant's arguments with respect to 35 U.S.C. § 101 (Alice) rejection, have been fully considered but they are not persuasive.
Applicant argues that the claimed subject matter is directed to an improvement in the technical functioning of a user terminal because it provides the ability to securely complete a payment transaction offline using cryptographic techniques. Amendment, p. 7. This argument is unpersuasive. The claimed invention fails to recite any improvement to the functioning of the user terminal. The user’s terminal forms a security code and signs random data with a private key. Both the forming of the code and the signing of the data are recited at a high level of generality. Beyond these two steps, the user’s terminal is merely used as a tool to collect, send and receive data. Examiner finds no indication that the claimed invention improves upon the functioning of the user’s terminal.
Additionally, Examiner finds no indication that there is some sort of improvement to the user’s terminal that would allow it to be used “offline.” It is also noted that there is no indication in the claimed invention that the user’s terminal is “offline” any time during the recited process. Additionally, there is no indication what applicant intends the term “offline” to comprise. Based on applicant’s remarks (see e.g., Amendment, pp. 7-8), it appears that applicant is suggesting that “offline” means that the user’s terminal does not have a network connection to a server (e.g., a merchant server). However, even if the user’s terminal did not have a network connection, it appears that applicant is simply making a decision to use a different channel of communication (e.g., NFC instead of an internet connection) to exchange data with the merchant. Examiner contends the ability to use a different communication channel, or protocol, is not a feature provided by the claimed invention.
Applicant argues that the claims recite significantly more than an abstract idea. Amendment p. 8. Examiner respectfully disagrees. Claim 15 recites the additional elements of: a user's terminal; a user interface in the user’s terminal; a safe memory area in the user’s terminal; and an Near Field Communication (NFC) protocol connection. The user’s terminal, user interface, and safe memory area are all recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception, or a portion thereof, using a generic computer component and/or device. Simply implementing the abstract idea on a generic computer or merely using a computer as a tool to perform an abstract idea cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
As per the sending and receiving of data over an NFC protocol connection, Examiner contends that the use of the NFC protocol connection is recited at a high level of generality. As currently recited, the sending and receiving of data over an NFC protocol connection is merely linking the abstract idea to a particular environment (e.g., an environment that uses near field communications). Accordingly, this additional element does not apply the abstract idea in a meaningful way beyond merely linking it to a
particular technological environment.
For the above reasons, and for those set forth in the 35 U.S.C. § 101 rejection seen above, all claims remain rejected under 35 U.S.C. § 101.
Claim Rejections – 35 U.S.C. § 103(a)
Applicant argues that the combination of Cox and Wilson does not disclose or suggest each of the features now recited in amended claim 15, namely receiving by the user's terminal random data from the point-of-sale terminal over the Near Field Communication (NFC) protocol connection; signing by the user's terminal the random data with a private key of the trust card to form a signature; and sending the signature to the point-of-sale terminal over the Near Field Communication (NFC) protocol connection to authorize the point-of-sale terminal to perform the payment transaction. Amendment, pp. 8-9. Examiner agrees in part. Examiner contends that Wilson discloses where random data (i.e., data item, e.g., a transaction-specific message comprising a transaction-specific random data string) is received by the user’s terminal (i.e., computing device, e.g., personal computer and/or mobile telephone) from the point-of-sale terminal (i.e., from the merchant/merchant server, e.g., via the merchant application). Wilson [0024-0026]; [0029-0031]; [0045]; [0066-0068]; [0102]; [0105]; Wilson Claims 45 and 48. Wilson also discloses where the user's terminal signs (i.e., signs, e.g., digitally signs) the random data (i.e., data item, e.g., a transaction-specific message comprising a transaction-specific random data string) with a private key of the trust card (i.e., with a private key associated with a payment card) to form a signature, and sends the signature (i.e., signed data item) to the point-of-sale terminal (i.e., to the merchant/merchant server) to authorize the point-of-sale terminal to perform the payment transaction (i.e., to effect the transaction). Wilson [0024-0026]; [0029-0031]; [0045]; [0066-0068]; [0102]; [0105]; Wilson Claims 45 and 48.
Wilson differs from the claimed invention, in part, because Wilson does not explicitly disclose the use of Near Field Communications (NFC) protocols to send and receive messages to/from the point-of-sale terminal. In view of applicant’s amendments, examiner has removed Wilson from the prior art rejection and has added a new reference, Hammad, which is more analogous to the claimed invention. Examiner contends that the combination of Cox and Hammad renders claim 15 obvious. Applicant indicates that the combination of Cox and Wilson does not disclose or suggest performing the steps recited in claim 15 in the context of a local offline interaction between a user terminal and a point-of-sale terminal, as required by the present claim. Amendment, p. 9. This argument is unpersuasive. Examiner notes that prior to the most recent amendment, the claimed invention failed to provide any indication whether the user’s terminal and the point-of-sale terminal were local or remote from each other. Examiner contends that simply because the claims invoke the use of a POS terminal does not mean, or require, that the interaction between the user’s terminal and the POS terminal is performed locally. For example, Applicant’s own Specification states “when the term RFID or NFC is used, a WLAN (Wireless Local Area Network) can also be used, whereby the point-of-sale terminal can be located far from the paying customer, while it is at a distance of about 5 cm in the case of NFC.” Specification [0057]. Examiner acknowledges that the amended claims now utilize an NFC connection which would require the user’s terminal and the POS terminal to be in proximity to each other during the sending and receiving steps.
Examiner further notes that there is nothing recited in the claim(s) that suggests, and/or requires, that the user’s terminal and/or the POS terminal is/are “offline.” It is also unclear what applicant intends an “offline interaction” to comprise. For example, it is unknown whether this means the user’s terminal is not connected to a network, the POS is not connected to a network, both terminals are not connected to a network, or something else altogether. Examiner contends that simply because one or more terminals utilize an NFC connection does not inherently mean that the terminal does not have access to an internet/network connection. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims.
For the above reasons, and for those set forth in the 35 U.S.C. § 103(a) rejection seen above, all claims remain rejected under 35 U.S.C. § 103(a).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure is cited in the Notice of References Cited (PTO-892). The additional cited art further establishes the state of the art prior to the effective filling date of Applicant’s claimed invention.
Sarkissian et al. (US 2009/0070268 A1) discloses a method for generating a code representative of a currency value according to one embodiment includes generating a first code, and combining a security code with the first code for creating a larger composite code, the composite code being associated with a predetermined currency value. Sarkissian [0003].
Wilson (US 2011/0031310 A1) discloses where random data (i.e., data item, e.g., a transaction-specific message comprising a transaction-specific random data string) is received by the user’s terminal (i.e., computing device, e.g., personal computer and/or mobile telephone) from the point-of-sale terminal (i.e., from the merchant/merchant server, e.g., via the merchant application). Wilson [0024-0026]; [0029-0031]; [0045]; [0066-0068]; [0102]; [0105]; Wilson Claims 45 and 48. Wilson also discloses where the user's terminal signs (i.e., signs, e.g., digitally signs) the random data (i.e., data item, e.g., a transaction-specific message comprising a transaction-specific random data string) with a private key of the trust card (i.e., with a private key associated with a payment card) to form a signature, and sends the signature (i.e., signed data item) to the point-of-sale terminal (i.e., to the merchant/merchant server) to authorize the point-of-sale terminal to perform the payment transaction (i.e., to effect the transaction). Wilson [0024-0026]; [0029-0031]; [0045]; [0066-0068]; [0102]; [0105]; Wilson Claims 45 and 48.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON FENSTERMACHER whose telephone number is (571)270-3511. The examiner can normally be reached Monday - Friday 9:00 AM to 5:30 PM ET, Alternate Fridays Off.
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, Patrick McAtee can be reached on 571-272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.F./Examiner, Art Unit 3698 April 28, 2025
/STEVEN S KIM/Primary Examiner, Art Unit 3698