DETAILED ACTION
This office action is in response to applicant’s communication dated on 11/12/2025.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims’ Status
Claims 1-18 are pending for consideration in this office action.
Priority
CONTINUATION
This application is a continuation application of U.S. application no. 16/734830 filed on January 06, 2020, now U.S. Patent US11443311 (“Parent Application”). See MPEP §201.07. In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicants desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, Applicants are reminded that the prosecution history of the Parent Application is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
Response to Amendment
101 Rejection
Applicant argues that the claims recite a practical application of an abstract idea and that claim 1 and 9 at least “reflects an improvement in the functioning of a computer, or an improvement or other technology or technical field”.
Examiner respectfully disagrees. Examiner notes that the basis of the rejection was not the case law argued by the Applicant. Therefore, the case law argued is moot. In effort of expediating prosecution, Examiner would like to at least note that the case law relied is not similar to the instant application and it is non-precedential.
Therefore, the claims are still determined to be directed to an abstract idea and that the abstract idea is till categorized under certain methods of organizing human activity; specifically, commercial interactions such as sales activities or behaviors and business relations.
Under Step-2A, Prong 2, the abstract idea is not integrated into a practical application.
The claims are analyzed as a whole, meaning all of the limitations and analyzed to determine
whether the claims are directed to a practical application. The claims recite additional elements;
however, the claimed additional elements are recited at a high level of generality and only
perform generic functions such as establishing a direct communication channel with a consumer computing device; generating a data message; transmitting the data message; receiving an encrypted notification message; etc. The additional elements merely automate the abstract idea. Each
of the additional elements / limitations are no more than mere instructions to apply the exception
using generic computer components. Accordingly, even in combination, the additional elements
do not integrate the abstract idea into a practical application. Furthermore, the Specification fails
to disclose a solution to a technical problem; MPEP 2106.04(d)(III). The MPEP section cited
recites that the "specification.. must describe the invention such that the improvement would be
apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an
improvement but in a conclusory manner…. the examiner should not determine the claim
improves technology. Second, if the specification sets for an improvement in technology, the
claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That
is, the claim includes the components or steps of the invention that provide the improvement
described in the specification." Emphasis added, MPEP 2106.04(d).
As for the Step-2B, 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 amount to
merely instructions to apply the exception using generic computer components. Mere
instructions to apply an exception using generic computer components cannot provide an
inventive concept. 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 idca to a particular
technological environment. Mere instructions to apply an exception using generic computer
components cannot provide an inventive concept.
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 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; claim 7 is a system claim. Thus, independent claims 1 and 7 are directed to statutory subject matter.
However, independent claims 1 and 7 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 and 7 being similar in scope):
Claim 1:
establishing, by a processor of an encryption device of an offline network merchant, a direct communication channel with a computing device;
generating, by the processor of the encryption device, a data message including a merchant identifier and a transaction amount;
transmitting, by a transmitter of the encryption device, the data message to the computing device over via the direct communication channel;
receiving, by a receiver of the encryption device, an encrypted notification message from the computing device via the direct communication channel, the encrypted notification message includes at least the merchant identifier, a consumer identifier associated with the computing device, and the transaction amount, wherein the encrypted notification message is generated from a payment transaction initiated, in response to receiving the data message, by the consumer computing device via the communication network while the encryption device remains offline, the payment transaction processed by a third-party payment processing server from a payment network and the encrypted notification message forwarded to the computing device from the third-party payment processing server, the third-party payment processing server encrypting the notification message with a public key of a first cryptographic key pair shared between the encryption device and a third-party payment processing server;
decrypting, by the processor of the encryption device, the encrypted notification message using a private key of the first cryptographic key pair; and
displaying, by a display interfaced with the encryption device, a confirmation message including at least the consumer identifier and the transaction amount included in the decrypted notification message.
Step 2A Prong 1: Does the claim recite an abstract idea, law of nature, or natural phenomenon MPEP 2106.04).
The abstract idea is categorized under certain methods of organizing human activity, including commercial interactions such as sales activities or behaviors and business relations. The claims capture clear business relations between an encryption device of an offline network merchant; a consumer computing device; a payment network; and a third-party payment processing server. The abstract idea, recited above, includes: establishing a direct communication channel with a consumer computing device; the consumer computing device having a connection with a third-party payment processing server via a communication network; transmitting the data message to the computing device over via the direct communication channel; receiving an encrypted notification message from the consumer computing device via the direct communication channel; displaying a confirmation message including at least the consumer identifier and the transaction amount included in the decrypted notification message. 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 – commercial interactions, 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.
The recited computing elements (claims 1 and 7: “a processor of an encryption device of an offline network merchant”; “a consumer computing device”; “a third-party payment processing server”; “a payment network”) 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).
The additional positive elements are: “generating a data message including a merchant identifier and a transaction amount; encrypting the payment transaction with a public key of a cryptographic key pair shared between the encryption device and a third-party payment processing server; decrypting the encrypted notification message using a private key of the cryptographic key pair” in claim 1; which amounts to linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h). Furthermore, some of the abovesaid step, i.e., encrypting/decrypting steps are recited at very high level without any specificity and does not turn abstract idea into practical application.
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, i.e. an encryption device of an offline network merchant. 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:
Claim 4, 13, 15, and 16 is 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 4 further describes the steps performed by the consumer computing device; claim 13 further describe the first/second cryptographic key pair; and claim 15 on using first salt in the encrypting of the notification message, which is another level of encryption; and claim 16 on using a second salt in the encrypting of the payment transaction which is another level of encryption, which all of the limitation are narrowing the steps performed in claim 1.
Claims 2, 3, 5, and 6 are not directed to any additional abstract ideas but is directed to non-functional descriptive material, which each further describes what the elements are in claim 1, for example, what an encrypted notification message are in claim 2 and 3; what an encryption device is in claim 5; and what does a consumer computing device include in claim 6. 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)). Specifically, the computing system encompasses general purpose hardware and software modules.
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 (claims 8-12 and 17-18), which are similar in scope to the dependent claims 2-7 and 15-16, 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 1-18 are rejected under 35 USC 101 as being directed to non-statutory subject matter.
Allowable Subject Matter
Claims 1-18 contain allowable subject matter over prior art. The closest prior arts in the field: 1) Grassadonia (US20180330346A1); 2) Jiang et al. (US20150278795A1); 3) Davis (US20160342994A1); and 4) John et al. (US20180167367A1), fail to teach or suggest the ordered combination in the context of conducting offline transaction, “establishing, by a processor of an encryption device of an offline network merchant, a direct communication channel with a consumer computing device, the consumer computing device having a connection with a third-party payment processing server via a communication network……. wherein the encrypted notification message is generated from a payment transaction initiated, in response to receiving the data message, by the consumer computing device via the communication network while the encryption device remains offline.” None of the cited references clearly, without the hindsight reasoning of the combination, teach or suggest this feature. Therefore, prior art indicated above, taken alone or in combination, fail to explicitly teach each and every limitations of claim 1 or 7.
Conclusion
THIS ACTION IS MADE FINAL. 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel can be reached on 571-270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YIN Y CHOI/Examiner, Art Unit 3699
2/25/2026