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 .
This application is a CON of 16/670,552 10/31/2019 PAT 11514449
Status of Claims
Claims 1-20 are currently pending and rejected.
Claim Rejection – 35 U.S.C. 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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The rationale for this finding is explained below. In the instant case, the claims are directed towards pre-authorizing non-yet activated payment instrument for immediate transaction at merchant. The claims are drawn to authorizing a transaction request based on a pre-authorization rule, which is a fundamental economic practice. As such, the present claims fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. The claims do not include limitations that are “significantly more” than the abstract idea because the claims do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Note that the limitations, in the instant claims, are done by the generically recited computer device. The limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. Therefore, claims 1-20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Step 1: The claims 1-20 are directed to a process, machine, manufacture, or composition matter.
In Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 (2014), the Supreme Court applied a two-step test for determining whether a claim recites patentable subject matter. First, we determine whether the claims at issue are directed to one or more patent-ineligible concepts, i.e., laws of nature, natural phenomenon, and abstract ideas. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296–96 (2012)). If so, we then consider whether the elements of each claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.
Claims 1-10 are directed to a manufacture (i.e., non-transitory computer readable medium claims).
Claims 11-19 are directed to a machine (i.e., system claims).
Claim 20 is directed to a process (i.e., a method claim).
Step 2A: The claims are directed to an abstract idea.
Prong One
The present claims are directed towards pre-authorizing non-yet activated payment instrument for immediate transaction at merchant. Independent claim 1, for example, recites a computer medium storing executable instruction for receiving a no card present (NCP) transaction request including a first indicator indicating whether the payment card is activated, determining that the payment card is unactivated based on the first indicator, determining that the payment card is associated with a second indicator indicating that at least one pre-authorization rule for authorizing NCP transaction prior to activation of a payment card, comparing transaction data to the at least one pre-authorization rule, and transmitting a transaction authorization to merchant system if the transaction data satisfies the at least one pre-authorization rule. The claims are drawn to authorizing a transaction request based on a pre-authorization rule, which is a fundamental economic practice. The claims are also related to managing transactions between people. As such, the present claims fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas.
Prong Two
Independent claim 1 recites a non-transitory computer readable medium, and a computer as additional elements. The additional elements are claimed to perform the receiving, determining, comparing, generating authorization, and transmitting steps. The steps are recited at a high-level of generality and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The computer that performs the steps is also recited at a high-level of generality, and merely automates the receiving, determining, comparing, and transmitting steps. Dependent claim 2 recites the computer rejects the transaction request (i.e., transmitting rejection response via network). Dependent claim 3 does not recite any additional element. Claim 4 recites a merchant system that stores payment data associated with the credit account (i.e., “receiving, processing, and storing data”). Claim 5 and 6 and 7 do not recite any additional element. Claim 8 recites the hardware processor rejects the transaction request (i.e., transmitting rejection response via network). Claim 9 recites the computer receives an indication that the credit account is activated and removes the second indicator (i.e., receiving data over network and deletes data in storage). Claim 10 does not recite any additional element. Claims 10-20 are the system and computerized method versions of claims 1-10. The recitation of the computer elements amounts to mere instruction to implement an abstract concept on computers. The present claims do not solve a problem specifically arising in the realm of computer networks. Rather, the present claims implement an abstract concept using existing computer technology in a networked computer environment. The present claims do not recite limitation that improve the functioning of computer, effect a physical transformation, or apply the abstract concept in some other meaningful way beyond generally linking the use of the abstract concept to a particular technological environment. As such, the present claims fail to integrate into a practical application.
Independent claims 1, 11, and 20 recites “generating a transaction authorization for the transaction request received through a channel identified as a pre-authorized channel and satisfying the at least one pre-authorization rule”. This limitation is explained in paragraph 0026 of the specification – “only those non-card transactions performed at specific merchants and via specific transaction channels (e.g., an e-Commerce channel) will be authorized and allowed…non-card transactions at any other non-pre-authorized channel or merchant will be declined”. Paragraph 0045 further provides an example – “if a particular merchant system 1240 is pre-authorized, by the channel used to attempt the transaction is not (e.g., in store manual entry), the transaction can be rejected”. This feature appears to be just another authorization rule to be complied. The claimed computer merely compares the channel which the transaction request is received to the approved channel in the pre-authorization rule to determine whether the payment request should be authorized. Such feature does not necessarily require a computer to perform. A human can mentally compare the channel against the rule and make decision. The present claims are merely utilizing existing computer technology to automate mental decisions according to preset rules. As such, there is no improvement to computer functionality, and the amended feature does not integrate the abstract concept into a practical application.
In the response field on 11/18/2025, Applicant amended the independent claims 1, 11, and 20, by revising the following limitations, “receiving, via a communications interface and from a merchant computing system, a first signal comprising a no card present (NCP) transaction request in connection with a first credit account, the transaction request being triggered by an application of the merchant computing system and associated with a set of transaction data including an identifier of a first transaction channel through which the requested transaction is performed”, “comparing the set of transaction data associated with the transaction request to pre-authorization criteria of the at least one pre-authorization rule associated with the first credit account to generate a comparison result”, and “transmitting, via the communications interface and to the merchant computing system, a second signal comprising the transaction authorization corresponding to the received transaction request”. These limitations introduced additional elements, such as “a communications interface”, “a first signal”, “a second signal”, “an application of the merchant computing system”. However, these additional elements are generic and do not provide improvement over existing computer technology. For example, the communications interface can be software per se, or combination of software and hardware to communicate signals between devices (see paragraph 0035 of the specification). The application of the merchant system is merely a generic software layer of the merchant system. The addition of these additional elements does not integrate the abstract concept into a practical application.
Step 2B: The claims do not recite additional elements that amount to significantly more than the abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As stated above the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. Under the 2019 PEG, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be reevaluated in Step 2B. Here, the receiving, determining, comparing, and transmitting steps are considered to be extra-solution activity in Step 2A, and thus it is re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field. The instant Specification does not provide any indication that the computer is anything other than a generic, off-the-shelf computer (see paragraph 0028 general purpose), and Symantec, TLI, and OIP Techs. court decisions cited in MPEP 2106.05[d][II] indicate that mere collection or receipt of data over a network and Versata Dev. Group, Inc. and OIP Techs., court decisions cited in MPEP 2106.05[d][II] indicate that storing and retrieving information in memory is a well-understood, routine, conventional activity is supported under Berkheimer Option 2. Moreover, according to MPEP 2106.05(d), “performing repetitive calculations”, “receiving, processing, and storing data”, “electronically scanning or extracting data from a physical document”, “electronic recordkeeping”, “storing and retrieving information in memory”, and “receiving or transmitting data over a network, e.g., using the Internet to gather data” are considered well-understood, routine, and conventional. The present claims do not improve the functioning of computer technology. Simply implementing the abstract idea on a generic computer or 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. Therefore, the present claims are ineligible for patent.
Prior Arts Cited Not Applied
The best references found by Examiner are Riechers et al. (Pub. No.: US 2020/0104942) and Goyal et al. (Pub. NO: US 2018/0276656). While Reichers broadly mentions about allowing CNP (“card not present”) transaction prior to receiving the physical card, Riechers does not teach the same steps in enabling NCP/CNP transaction while minimizing risk exposure to the merchant. Goyal teaches issuing and activating a virtual card, but fails to teach the actual process recited in independent claim 1, 11, and 20. Therefore, no prior art rejection is cited in this Office Action.
However, the novelty of the present claims (i.e., using a second indicator to indicate whether at least one pre-authorization rule is associated with a payment account, and comparing transaction data to the at least one pre-authorization rule to determine whether to authorize the transaction) lies entirely in the realm of abstract idea. This feature does not improve computer function. Therefore, the present claims are still subject to rejection under 35 U.S.C. 101.
Response to Remarks
In the response field on 11/18/2025, Applicant amended the independent claims 1, 11, and 20, by revising the following limitations, “receiving, via a communications interface and from a merchant computing system, a first signal comprising a no card present (NCP) transaction request in connection with a first credit account, the transaction request being triggered by an application of the merchant computing system and associated with a set of transaction data including an identifier of a first transaction channel through which the requested transaction is performed”, “comparing the set of transaction data associated with the transaction request to pre-authorization criteria of the at least one pre-authorization rule associated with the first credit account to generate a comparison result”, and “transmitting, via the communications interface and to the merchant computing system, a second signal comprising the transaction authorization corresponding to the received transaction request”. These limitations introduced additional elements, such as “a communications interface”, “a first signal”, “a second signal”, “an application of the merchant computing system”. However, these additional elements are generic and do not provide improvement over existing computer technology. For example, the communications interface can be software per se, or combination of software and hardware to communicate signals between devices (see paragraph 0035 of the specification). The application of the merchant system is merely a generic software layer of the merchant system. The addition of these additional elements does not render the claims any less abstract.
Applicant's arguments filed on 11/18/2025 with respect to rejection under 35 U.S.C. 101 have been fully considered but they are not persuasive.
Step 2A Prong Two:
Applicant argued that the elements of amended claim 1 "represent improvement to computing system for authorizing and executing transactions that are conducted using non-activated payment instruments". Applicant further argued that the claimed elements "enable a computing system to identify non-card/non-tokenized transactions associated with a credit account that are performed at specific merchants and via specific transaction channels and suitably authorize transactions that satisfy pre-defined pre-authorization criteria". Examiner disagrees. Examiner points out that what is being improved is not the functionality of the computer, but the abstract concept of pre-authorizing non-activated payment instrument for immediate transaction at merchant. Applicant argued that the elements in amended claim 1 “add a meaningful limitation in that they provide technical aspects of a computing system which enables (1) real-time detection of transactions associated with pre-authorized credit accounts and (2) authorization transactions that satisfy defined pre-authorization rules associated with the credit accounts”. Examiner disagrees and points out that the increased speed in comparing transaction data against the pre-authorization rules comes solely from the capabilities of general-purpose computers. The functionality of the computer itself does not see any improvement. Examiner also points to FairWarning IP, LLC v. Iatric Sys, the Federal Circuit ruled that “accelerating a process of analyzing audit log data when the increased speed comes solely from the capabilities of a general-purpose computer is not sufficient to show an improvement in computer-functionality”. The present claims are similar to the ineligible claims of FairWarning IP, LLC v. Iatric Sys. Moreover, the present claims do not require real-time detection and processing. There is no speed requirement in the actual claim language. Even if the claims require real-time processing, such feature is not sufficient to integrate the abstract idea into practical application, in view of court’s decision in Electric Power Group v. Alstom.
Applicant also argued the claimed computing system “provides technical advantages of supporting a limited set of transactions that ‘may be approved even though the corresponding card has not yet been authorized, based on a set of indicator-specific authorization rules’” and NCP transactions “can be handled using specific ules/procedures to allow certain pre-authorizations to be granted and used without an activated card”. Examiner points out that whether to approve transactions using a not-yet activated card based on a set of rules is entirely a business decision and an abstract concept. The process does not require any particular machine or improved computer functionality. Applicant further argue the transactions “are only authorized, for example, when used for merchant-specific purchases using particular channel(s) associated with an existing rule set”. This limitation is explained in paragraph 0026 of the specification – “only those non-card transactions performed at specific merchants and via specific transaction channels (e.g., an e-Commerce channel) will be authorized and allowed…non-card transactions at any other non-pre-authorized channel or merchant will be declined”. Paragraph 0045 further provides an example – “if a particular merchant system 1240 is pre-authorized, by the channel used to attempt the transaction is not (e.g., in store manual entry), the transaction can be rejected”. This feature appears to be just another authorization rule to be complied. The claimed computer merely compares the channel which the transaction request is received to the approved channel in the pre-authorization rule to determine whether the payment request should be authorized. Such feature does not necessarily require a computer to perform. A human can mentally compare the channel against the rule and make decision. The present claims are merely utilizing existing computer technology to automate mental decisions according to preset rules. As such, there is no improvement to computer functionality, and the amended feature does not integrate the abstract concept into a practical application.
Step 2B:
Applicant argued that the combination of steps recites in claim 1 “is not routine or conventional activity in the field of real-time transaction processing and authorization”. Examiner disagrees and points out that independent claim 1 only recites a non-transitory computer readable medium, and a computer as additional elements. The additional elements are claimed to perform the receiving, determining, comparing, and transmitting steps. The steps are recited at a high-level of generality and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The computer that performs the steps is also recited at a high-level of generality, and merely automates the receiving, determining, comparing, generating a transaction authorization, and transmitting steps. According to MPEP 2106.05(d), “performing repetitive calculations”, “receiving, processing, and storing data”, “electronically scanning or extracting data from a physical document”, “electronic recordkeeping”, “storing and retrieving information in memory”, and “receiving or transmitting data over a network, e.g., using the Internet to gather data” are considered well-understood, routine, and conventional. The instant Specification does not provide any indication that the computer is anything other than a generic, off-the-shelf computer. The present claims do not improve the functioning of computer technology. Simply implementing the abstract idea on a generic computer or 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. Therefore, the present claims are ineligible for patent.
Conclusion
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/HAO FU/Primary Examiner, Art Unit 3695
JAN-2026