DETAILED ACTION
The following FINAL Office action is in response to Amendment filed on December 11, 2025 for application 17907932
Acknowledgements
Claims 18-20 are canceled.
Claims 1-17 have been rejected and examined.
Notice of Pre-AIA or AIA Status
The present application, filed on or after December 13, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
In response to the Applicant’s arguments under 35 USC 101, Applicant argues that the amended claims recite are directed to an improvement to computer functionality versus an abstract idea citing the Ex Parte Desjardins. Applicant further argues that the amended claims recite steps for a marketplace application executing on a user device to initiate a transaction by launching a transfer application on the user device to (1) receive a payload comprising a digital tag for a second user and a transaction amount from the marketplace application executing on the same device, (2) communicate with a digital tag computer to retrieve the account information for the second user, and (3) generate and transmit an authorization request to an issuer of the account for the second user, hence reciting an improvement to the computer functionality because the claims allow for a first user to more simply send, receive, and request transactions from a second user, as the digital tag is resolved by a digital tag computer into the virtual credential. Applicant argues that the user merely selects a good or service on a marketplace application, and the transaction is initiated based on an improved functioning of the user device. Applicant further argues that claim features directed at receiving the digital tag by a marketplace application, passing it to the transfer application, which then retrieves the account credential linked to the digital tag, and generates the pull transaction message including the account credential clearly integrate any alleged abstract idea into a practical application because they improve the functioning of the user device. Lastly, Applicant argues that the additional elements such as the marketplace application and the transfer application confer a technological improvement to a technical problem: the applications initiate a transaction without having the user enter and/or request credentials of a second user and the two applications on the user device orchestrate a set of method steps that improve the functioning of a user device in an e-ecommerce environment.
Examiner respectfully disagrees as the amended claims are still directed to a concept of “conducting a transaction between a first user and a second user by linking a tag to a credential”. The amended claims still fall under “certain methods of organizing human activity” grouping of abstract ideas, classified under “fundamental economic principles or practices”, specifically “mitigating risk” as part of a transaction because the amended claims are reciting series of steps for facilitating and allowing for a first user to transact with a second user by sending, receiving, and requesting transactions from a second user while a tag or an alias is being associated or linked to a credential eventually allowing the first user and second user to be able to share their respective tags to any other user without the need to share their real credential as the digital tag further mitigating privacy concerns with a first user learning the primary account number of a second user. The newly recited steps “initiating a transaction with a second user by a first user; selecting a [payment method] to complete the transaction; launching the [payment method]; receiving a payload comprising a tag associated with a second user and a transaction amount wherein the tag is a unique data string that is linked to a payment credential of the second user; transmitting the tag associated with the second user; receiving the payment credential of the second user including primary account number or a token linked to the tag, wherein the tag is replaced with the primary account number or the token prior to generating the authorization request message in form of an authorization request message for the transaction amount; generating a push transfer message comprising the transaction amount, and the primary account number or token associated with the second user; and transmitting the push transfer message requesting approval of the transaction amount to be processed using the primary account number or the token of the second user” do not seem to recite any improvement to the computer functionality other than simply contributing to the abstract idea of conduct a transaction between a first user and second user. In response to the Advance Notice of Change to the MPEP in light of Ex Parte Desjardins dated December 5, 2025, Examiner disagrees as the amended claim 1 does not involve or recite any machine learning technology. The amended limitations do not reflect any improvement to the computer functionality via the steps being recited. Also, Examiner believes that the judicial exception is not integrated into a practical application because the additional elements of the claims such as the use of a first user device, transfer application, marketplace application. digital tag computer and transport computer are utilized as tools to perform an abstract idea and/or generally link the use of a judicial exception to a particular technological environment. The amended claims do not recite an improvement to the technology other than using a first user device, transfer application, marketplace application, digital tag computer and transport computer which implement the abstract idea does not render the claim patent eligible because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The language describing the claim features directed at receiving the digital tag by a marketplace application, passing it to the transfer application, which then retrieves the account credential linked to the digital tag, and generates the pull transaction message including the account credential doesn’t require any additional functionality to be performed nor does it improve the functioning of the user device. Lastly, in response to the argument for “well-known routine or conventional”, Examiner disagrees as the rejection doesn’t rely on the additional elements being well-known routine or conventional.
Applicant’s arguments are moot under new grounds of rejection.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Amended Claims 1 and 13 recite “selecting, on the marketplace application, a transfer application to complete the transaction and receiving, by the transfer application from the marketplace application, a payload….”. According to the Applicant’s Specification, a user may choose one of a plurality of transfer applications (e.g., a digital wallet) to conduct the payment or a first user may select to pay using the transfer application (See Specification ¶0032, ¶0056). Therefore, the newly recited language is not supported by the Applicant’s originally filed Specification as it does not disclose the functions of “selecting a transfer application and receiving, by the transfer application from the marketplace application, a payload…” through the use of a marketplace application.
Claims 2-12 and 14-17 are also rejected as they depend from Claims 1 and 13.
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 1-17 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 1-12 are directed to a method and claims 13-17 are directed to a product with a medium. Therefore, these claims fall within the four statutory categories of invention.
The claims recite conducting a transaction between a first user and a second user linking a tag to a credential which is an abstract idea. Specifically, the claim recites “initiating a transaction with a second user by a first user; selecting a [payment method] to complete the transaction; launching the [payment method]; receiving a payload comprising a tag associated with a second user and a transaction amount wherein the tag is a unique data string that is linked to a payment credential of the second user; transmitting the tag associated with the second user; receiving the payment credential of the second user including primary account number or a token linked to the tag, wherein the tag is replaced with the primary account number or the token prior to generating the authorization request message in form of an authorization request message for the transaction amount; generating a push transfer message comprising the transaction amount, and the primary account number or token associated with the second user; and transmitting the push transfer message requesting approval of the transaction amount to be processed using the primary account number or the token of the second user” 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, classified under “fundamental economic principles or practices”, specifically “mitigating risk” as part of a transaction (See MPEP 2106, specifically 2106.04(a)) because – for example, in this case, the claims involve a series of steps for facilitating and allowing for a first user to transact with the a second user by sending, receiving, and requesting transactions from a second user while a tag is being associated or linked into a credential eventually allowing the first user and second user to be able to share their respective tags to any other user without the need to share their real credential as the digital tag. Accordingly, the claim recites an abstract idea (See MPEP 2106, specifically 2106.04(a)).
This judicial exception is not integrated into a practical application because the additional elements of the claims such as the use of a first user device, digital tag computer and transport computer as tools to perform an abstract idea and/or generally link the use of a judicial exception to a particular technological environment (See MPEP 2106, specifically 2106.04(d)). [The use of a first user device, transfer application, marketplace application digital tag computer and transport computer to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment] does not render the claim patent eligible because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. Specifically, the first user device, transfer application, marketplace application, digital tag computer and transport computer perform the steps or functions of “initiating a transaction with a second user by a first user; selecting a [payment method] to complete the transaction; launching the [payment method]; receiving a payload comprising a tag associated with a second user and a transaction amount wherein the tag is a unique data string that is linked to a payment credential of the second user; transmitting the tag associated with the second user; receiving the payment credential of the second user including primary account number or a token linked to the tag, wherein the tag is replaced with the primary account number or the token prior to generating the authorization request message in form of an authorization request message for the transaction amount; generating a push transfer message comprising the transaction amount, and the primary account number or token associated with the second user; and transmitting the push transfer message requesting approval of the transaction amount to be processed using the primary account number or the token of the second user”. The additional claim elements are not indicative of integration into a practical application, because the claims do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), 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, specifically 2106.05), the additional elements of a first user device, transfer application, marketplace application, digital tag computer and transport computer, to perform the steps amounts to no more than using a first user device, transfer application, marketplace application, digital tag computer and transport computer to automate and/or implement the abstract idea of conducting a transaction between a first user and a second user linking a tag to a credential. As discussed above, taking the claim elements separately, the first user device, digital tag computer and transport computer perform the “steps” of Claim 1. 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 conducting a transaction between a first user and a second user linking a tag to a credential. 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 first user device, transfer application, marketplace application, digital tag computer and transport computer to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims further describe details of the components within the payload and additional steps receiving a second payload to generate a pull transfer message which further recite the abstract idea of conducting a transaction between a first user and a second user linking a tag to a credential. The dependent claims recite additional elements such as “a second user device”, however, they do not 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 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 of this title, 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 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Malhotra et al. (US 2017/0364910 A1) in view of Brendell et al. (US 2013/0054413 A1) in view of Kumnick et al. (US 9,846,878 B2) and in further view of FEDAK (US 2016/0321650 A1).
Regarding Claims 1 and 13, Malhotra discloses a method comprising:
receiving, by the transfer application [from the marketplace application], a payload comprising a digital tag associated with a second user, and a transaction amount, wherein the transfer application is associated with a first user account of the first user, wherein the digital tag is a unique digital data string that is linked to a payment credential of the second user associated with a second user account of the second user; (¶0033, ¶0035 “service provider (first user device) is in communication with gateway computer 306 (digital tag computer)”, now in some embodiments, the gateway computer 306 will refer to a first user device such as in ¶0068, ¶0070, ¶0086 “merchant will be the first user device that receives the alias from the user, ¶0088, ¶0094, ¶0103)
transmitting, by the transfer application to a digital tag computer, the digital tag associated with the second user and resolving the digital tag associated with the second user; (¶0032 “digital tag computer is the gateway computer 306 that is connected to alias directory which translates beneficiary/recipient's alias into destination account information”, ¶0035, In some embodiments show in Fig. 5, gateway computer will refer to as the first user device that is connected to a storage device which is the digital tag computer”, ¶0073 “the alias is translated at the alia directory 314”, ¶0086 “merchant sends the alias to get translated via the payment network's API”), ¶0089, ¶0095, ¶0105, ¶0106)
receiving, by the transfer application from the digital tag computer, the payment credential of the second user including a primary account number or a token linked to the digital tag and identifying a second user account, wherein the digital tag is replaced with the primary account number or the token prior to generating an authorization request message for the transaction amount on the first user device of the first user, wherein the authorization request message seeks authorization to transfer the transaction amount from the first user account of the first user to the second user account of the second user; (¶0074, ¶0089)
transmitting, by the transfer application to a transport computer, the push transfer message requesting approval of the transaction amount to be processed using the primary account number or the token of the second user (¶0091)
Malhotra does not disclose: receiving, on a first user device, [a transaction amount].
Brendell however discloses: receiving, on a first user device, [a transaction amount] (¶0023 “the consumer receives an RFID tag that comprises a unique identifier a transaction identifier, and transaction information such as the amount due and merchant information).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Malhotra to include “receiving, on a first user device, [a transaction amount]”, as disclosed in Brendell, in order to provide a contactless payment system for merchant transactions (see Brendell abstract).
The combination of Malhotra and Brendell does not disclose generating, by the transfer application, the authorization request message in form of a push transfer message comprising the transaction amount and the primary account number or token associated with the second user.
Kumnick however discloses:
generating, by the transfer application, the authorization request message in form of a push transfer message comprising the transaction amount and the primary account number or token associated with the second user; (Col. 16 lines 47-51, Col. 16 lines 59-67 “transaction information consists of any information associated with a current transaction, such as the transaction amount, merchant identifier, merchant location, acquirer bank identification number (BIN), card acceptor ID, etc. as well as any other information that may be utilized in determining whether to identify and/or authorize a transaction”)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Brendell to include “generating, by the transfer application, the authorization request message in form of a push transfer message comprising the transaction amount and the primary account number or token associated with the second user”, as disclosed in Kumnick, in order to provide tokens that may be used to make a consumer's payment account information more secure without interfering with a merchant's programs (see Kumnick Col. 23 lines 7-21).
The combination of Malhotra, Brendell and Kumnick does not disclose: initiating, by a marketplace application on a first user device of a first user, a transaction with a second user; selecting, on the marketplace application, a transfer application to complete the transaction; launching the transfer application on the first user device.
FEDAK however discloses:
initiating, by a marketplace application on a first user device of a first user, a transaction with a second user (¶0017, ¶0019, ¶0031)
selecting, on the marketplace application, a transfer application to complete the transaction (¶0018, ¶0019, ¶0032)
launching the transfer application on the first user device (¶0018)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Brendell to include “initiating, by a marketplace application on a first user device of a first user, a transaction with a second user; selecting, on the marketplace application, a transfer application to complete the transaction; launching the transfer application on the first user device”, as disclosed in FEDAK, in order to provide a system facilitating and enhancing the security of online transactions and purchase transactions for products and/or services through an online store (see FEDAK ¶0017).
Regarding Claim 2, Malhotra discloses wherein the payload is received by the transfer application from an aggregation entity computer (¶0094).
Regarding Claim 3, the combination of Malhotra, Brendell, Kumnick and Fedak discloses the invention as above.
Brendell further discloses wherein the payload further comprises a transaction identifier, and the push transfer message further comprises the transaction identifier and the account identifier or token associated with the first user (¶0023).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Malhotra to include “receiving, on a first user device, [a transaction amount]”, as disclosed in Brendell, in order to provide a contactless payment system for merchant transactions (see Brendell abstract).
Regarding Claim 4, the combination of Malhotra, Brendell, Kumnick and Fedak discloses the invention as above.
Kumnick further discloses wherein the primary account number or token received is a virtual primary account number or virtual token (Col. 4 lines 13-23).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Malhotra to include wherein the primary account number or token received is a virtual primary account number or virtual token, as disclosed in Kumnick, in order to provide tokens that may be used to make a consumer's payment account information more secure without interfering with a merchant's programs (see Kumnick Col. 23 lines 7-21).
Regarding Claims 5 and 15, the combination of Malhotra, Brendell, Kumnick and Fedak discloses the invention as above.
Kunick further discloses wherein the push transfer message is an original credit transaction message (Col. 4 lines 24-40).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Malhotra to include wherein the push transfer message is an original credit transaction message, as disclosed in Kumnick, in order to provide tokens that may be used to make a consumer's payment account information more secure without interfering with a merchant's programs (see Kumnick Col. 23 lines 7-21).
Regarding Claims 6 and 16, while Brendell discloses: receiving, by the transfer application, a second payload comprising the digital tag associated with the second user, a transaction identifier, the transaction amount, and a time stamp (¶0024)
The combination of Malhotra, Brendell, Kumnick and Fedak does not disclose: generate, by the transfer application, a pull transfer message comprising the transaction amount, the transaction identifier, an account identifier or token associated with a first user of the user device, and the primary account number or token associated with the second user; and transmitting, by the transfer application to the transport computer, the pull transfer message.
Kumnick however discloses: generate, by the transfer application, a pull transfer message comprising the transaction amount, the transaction identifier, an account identifier or token associated with a first user of the user device, and the primary account number or token associated with the second user; and transmitting, by the transfer application to the transport computer, the pull transfer message (Col. 16 lines 47-51, Col. 16 lines 59-67)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Malhotra to include generate, by the transfer application, a pull transfer message comprising the transaction amount, the transaction identifier, an account identifier or token associated with a first user of the user device, and the primary account number or token associated with the second user; and transmitting, by the transfer application to the transport computer, the pull transfer message, as disclosed in Kumnick, in order to provide tokens that may be used to make a consumer's payment account information more secure without interfering with a merchant's programs (see Kumnick Col. 23 lines 7-21).
Regarding Claim 7, the combination of Malhotra, Brendell, Kumnick and Fedak discloses the invention as above.
Brendell discloses wherein the second payload is received from the digital tag computer (¶0023).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Malhotra to include “receiving, on a first user device, [a transaction amount]”, as disclosed in Brendell, in order to provide a contactless payment system for merchant transactions (see Brendell abstract).
Regarding Claim 8, Malhotra discloses wherein the transfer application adds the transaction amount to an account associated with the first user (¶0028)
Regarding Claim 9, Malhotra discloses transmitting, by the transfer application to a first authorizing entity computer associated with a first authorizing entity, the transaction amount to be added to an account associated with the first user managed by the first authorizing entity (¶0028)
Regarding Claims 10 and 17, the combination of Malhotra, Brendell, Kumnick and Fedak discloses the invention as above.
Brendell discloses wherein the pull transfer message is an account funding transaction message (¶0031)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Malhotra to include “receiving, on a first user device, [a transaction amount]”, as disclosed in Brendell, in order to provide a contactless payment system for merchant transactions (see Brendell abstract).
Regarding Claims 11 and 14, Malhotra discloses wherein the first user device is a mobile device (¶0094)
Regarding Claim 12, Malhotra discloses wherein the first user device receives the digital tag associated with the second user from a second user device (¶0033, ¶0035)
Conclusion
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 ZEHRA RAZA whose telephone number is (571)272-8128. The examiner can normally be reached 10AM-6:30PM.
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/ZEHRA RAZA/Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697
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