DETAILED ACTION
Acknowledgements
This office action is in response to the claims filed 04/10/2026.
Claims 1, 9, and 14 are amended.
Claims 7 and 20 are cancelled.
Claims 1-6, and 8-19 are pending.
Claims 1-6, and 8-19 have been examined.
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 .
Claim Objections
Claim 14 objected to because of the following informalities: Claim 14 contains current amendments but is labelled “Previously Presented”. Appropriate correction is required.
Response to Arguments
Applicant's arguments filed 04/10/2026 have been fully considered but they are not persuasive.
101
Applicant argues “This is not merely verifying identity or mitigating risk. It is a specific cryptographic token architecture. Silvestre, cited by the Examiner, describes a payment token and EMV cryptogram generation (see, e.g., paras. [0039]-[0045]), but does not disclose a second, device-bonded merchant token.” Examiner disagrees.
It is unclear where the “bond” of the token goes beyond verifying identity or mitigating risk. According to the disclosure(39, 42), “The merchant device token is linked or bonded to the smartphone 103 and locked to the merchant 104. In other words, the merchant device token is a unique value specifically generated for the smartphone 103 of the user 101 and the merchant 104. By checking the merchant device token during transaction authentication, identity of both the user and the merchant can be verified with confidence.” The merchant device token acts as an identifier. The recited bond can be a session ID that identifies the merchant, user and transaction. This fits the definition of a “unique value” that represents the “bond”. The disclosure makes no mention of the token or bond being cryptographic.
Tokens are the representation of information and these identifiers are used to create a cryptogram. The disclosure does not provide algorithms towards the generated tokens, or show how technology is being improved. Applicant appears to conflate the metrics and reasoning for 101 and 103 rejections, it is unclear how the 103 rejection prior art arguments are related to a subject matter abstract idea rejection. The rejection is maintained.
112
Due to Applicant’s amendments, the rejections are withdrawn.
103
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 1-6, and 8-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Subject Matter Eligibility Standard
When considering subject matter eligibility under 35 U.S.C. § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter (101 Analysis: Step 1). Even if the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) (101 Analysis: Step 2a(Prong 1), and if so, Identify whether there are any additional elements recited in the claim beyond the judicial exception(s), and evaluate those additional elements to determine whether they integrate the exception into a practical application of the exception. (101 Analysis: Step 2a (Prong 2). If additional elements does not integrate the exception into a practical application of the exception, claim still requires an evaluation of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception. If the claim as a whole amounts to significantly more than the exception itself (there is an inventive concept in the claim), the claim is eligible. If the claim as a whole does not amount to significantly more (there is no inventive concept in the claim), the claim is ineligible. (101 Analysis: Step 2b).
The 2019 PEG explains that the abstract idea exception includes the following groupings of subject matter: a) Mathematical concepts b) Certain methods of organizing human activity and c) Mental processes
Analysis
In the instant case, claim 1 is directed to a method, claims 9 and 14 are directed to an article of manufacture.
Step 2a.1– Identifying an Abstract Idea
The claims recite the steps of “requesting generation … generating… a token… and processing… generating a cryptogram… transmitting the cryptogram….” The recited limitations fall within the certain methods of organizing human activity grouping of abstract ideas, specifically, fundamental economic principles, and mitigating risk. Accordingly, the claims recites an abstract idea.
See MPEP 2106.
Step 2a.2 – Identifying a Practical Application
The claim does not currently recite any additional elements or combination of additional elements that integrate the judicial exception into a practical application.
Accordingly, even in combination, these elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Mere instructions to apply the exception using generic computer components and limitations to a particular field of use or technological environment do not amount to practical applications. The claim in directed to an abstract idea.
Step 2b
The claim limitations recite “requesting generation… a token… and processing… generating a cryptogram… transmitting the cryptogram…” are not additional elements and they amount to no more than mere instructions to apply the exception using a generic computer component. For the same reason these elements are not sufficient to provide an inventive concept. This is also determined to be well-understood, routine and conventional activity in the field. The Symantec, TLI, and OIP Techs, court decision cited in MPEP 2106.05(d)(II) indicates that mere receipt or transmission of data over a network is a well-understood, routine and conventional function when it is claimed in a merely generic manner, as it is here. Therefore, when considering the additional elements alone, and in combination, there is no inventive concept in the claim and thus the claim is not eligible.
Viewed as a whole, instructions/method claims recite the concept of a fundamental economic practice in product inventory and distribution as performed by a generic computer. The claims do not currently recite any additional elements or combination of additional elements that amount to significantly more than the judicial exception. The elements used to perform the claimed judicial exception amount to no more than mere instructions to implement the abstract idea in a network, and/or merely uses a network as a tool to perform an abstract idea and/or generally linking the use of the judicial exception to a particular environment.
Dependent claims 2, 3, 13, 15, and 16 discuss functions in more descriptive detail of the steps geared toward the abstract idea. As such, these elements do not provide the significantly more to the underlying abstract idea necessary to render the invention patentable.
Dependent claims 4-5, 8, 11, 17 and 18 recite insignificant extra solution activity such as displaying and sending information. As such, these elements do not provide the significantly more to the underlying abstract idea necessary to render the invention patentable.
Claims 6, 10, 12, and 19 describe an authentication process also geared toward the abstract idea and mitigating risk. As such, these elements do not provide the significantly more to the underlying abstract idea necessary to render the invention patentable.
The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Therefore, based on case law precedent, the claims are claiming subject matter similar to concepts already identified by the courts as dealing with abstract ideas. See Alice Corp. Pty. Ltd., 573 U.S. 208 (citing Bilski v. Kappos, 561, U.S. 593, 611 (2010)).
The claims at issue amount to nothing significantly more than an instruction to apply the abstract idea using some unspecified, generic computer. See Alice Corp. Pty. Ltd., 573 U.S. 208. Mere instructions to apply the exception using a generic computer component and limitations to a particular field of use or technological environment cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The use of a computer or processor 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.
Conclusion
The claim as a whole, does not amount to significantly more than the abstract idea itself. This is because the claim does not affect an improvement to another technology or technical filed; the claim does not amount to an improvement to the functioning of a computer system itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, the Examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
Dependent claims do not resolve the deficiency of independent claims and accordingly stand rejected under 35 USC 101 based on the same rationale.
Dependent claims 2-6, 8, 10-13 and 15-19 are also rejected.
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 1-6, and 8-19 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 claim(s) 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 9 and 14 recite “requesting generation, retrieval, or activation of a payment token associated with a payment device of a user….” According to the disclosure(¶ 29, 32, 35-38), “after the user details and/or OTP is verified, the merchant 104 generates a token associated with the card 102 and stores it at the merchant server 105 or in the merchant app on the smartphone 103 for future use. If the user 101 is a returning customer and the token for the card 102 is already stored at the merchant server 105, then the token is retrieved or activated after the identity of the user 101 is verified on the smartphone 103.” The disclosure provides support for the merchant generating a token, the disclosure does not provide support for requesting generation, retrieval, or activation of a payment token. The disclosure does not provide written description for the limitation. Dependent claims 2-6, 8, 10-13 and 15-19 are also rejected.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6, and 8-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 14 recite “requesting generation, retrieval, or activation of a payment token associated with a payment device of a user, wherein an identity of the user is verified using a personal communication device in response to a request from the merchant…generating… processing…generating… transmitting….” The claim is unclear and indefinite as to the entity or entities performing the claimed step. Dependent claims 2-6, 8, and 15-18 are also rejected.
Claim Rejections - 35 USC § 103
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, 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 1-6, and 8-19 are rejected under 35 U.S.C. 103 as being unpatentable over Royyuru (US 9846866) (“Royyuru”), and further in view of Pickering et al. (US 20170213218) (“Pickering”).
Regarding claims 1, and 14, Royyuru discloses requesting generation, retrieval, or activation of a payment token associated with a payment device of a user, (Figure 8, 9; column 10, line 62-67, column 11, line 1-8)
generating a merchant device token associated with a merchant and bonded to the personal communication device of the user (Figure 8; column 2, line 44-56, column 3, line 1-23, column 10, line 53-67, column 11, line 1-45; claim 1); and
processing a transaction between the user and the merchant using the payment token and the merchant device token, wherein processing the transaction comprises; :generating a cryptogram based on the payment token and the merchant device token; and transmitting the cryptogram to an issuer to enable the issuer to authorize the transaction based on the cryptogram (Abstract; Figure 9; column 11, line 46-67, column 12, line 1-8; claim 1)
Royyuru does not disclose wherein an identity of the user is verified using a personal communication device in response to a request from the merchant.
Pickering teaches wherein an identity of the user is verified using a personal communication device in response to a request from the merchant (¶ 70, 75, 76).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Royyuru and Pickering in order to provide secure electronic payment techniques (Pickering; ¶ 2-4).
Regarding claims 2 and 15, Royyuru discloses authenticating the merchant device token and attaching an authentication information with the merchant device token (column 2, line 44-56, column 3, line 1-23, column 10, line 53-67, column 11, line 1-45).
Regarding claims 3 and 16, Pickering teaches further comprising providing details of the payment device to the merchant before the transaction (Abstract; ¶ 75).
Regarding claims 4 and 17, Pickering teaches directing the user to an authentication screen after the user provides the details of the payment device (¶ 70-76).
Regarding claims 5 and 18, Royyuru discloses prompting the user to enter a one- time password, received on the personal communication device from the issuer, on the authentication screen to verify the identity of the user (column 2, line 44-56, column 3, line 1-23, column 10, line 53-67, column 11, line 1-45; claim 11, 14, 15).
Regarding claims 6 and 19, Pickering teaches authenticating the user by a personal identification number or biometric identification on the personal communication device (¶ 70-73, 75).
Regarding claims 8 and 11, Pickering teaches wherein verifying the identity of the user comprises verifying the identity of the user via another personal communication device used by the user other than the personal communication device used in the transaction between the user and the merchant (¶ 70-77).
Regarding claim 9, Royyuru discloses request generation, retrieval, or activation of a payment token associated with the a payment device of the a user, wherein an identity of the user is verified using a personal communication device in response to a request from the merchant, generate a merchant device token associated with a merchant and bonded linked to the personal communication device of the user, and initiate processing of a transaction with the user using the payment token and the merchant device token, wherein initiate the processing comprises generate a cryptogram based on the payment token and the merchant device token and transmit the cryptogram to an issuer to enable the issuer to authorize the transaction based on the cryptogram (Figure 9; column 2, line 44-56, column 3, line 1-23, column 10, line 53-67, column 11, line 1-45; claim 1).
Regarding claim 10, Pickering teaches wherein the merchant server is further configured to: verify the identity of the user by directing the user to an authentication screen; and authenticate the merchant device token and attach an authentication information to the merchant device token (¶ 70-76).
Regarding claim 12, Royyuru discloses wherein transmit the cryptogram to the issuer comprises transmit the cryptogram to an issuer server configured to authenticate the transaction with the user by verifying credentials associated with the payment device (Abstract; Figure 9; column 11, line 46-67, column 12, line 1-8; claim 1)
Regarding claim 13, Royyuru discloses wherein the payment device is a payment card with a card number, expiry date, and a security code (column 3, line 2-15).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kallugudde et al., (US 2021/0176060) teaches family, same inventor/assignee.
Spector et al. (US 20190370790) (“Spector”) teaches the merchant generating a token
Royyuru et al. (US 2008/0208746) (“Royyuru”)
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