DETAILED ACTION
Acknowledgements
This office action is in response to the claims filed 11/28/2025.
Claims 1, 8, 9, 11, 12 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 .
Response to Arguments
Applicant's arguments filed 11/28/2025 have been fully considered but they are not persuasive.
101
Applicant argues “one of ordinary skill in the art of electronic/computerized payment transactions would immediately appreciate the usefulness/utility of the improved transaction security in the claimed invention in, on average, over five (5) billion electronic/computerized payment transactions per day between customers and merchants. One of ordinary skill understands that the security of these transactions is of the utmost importance. The very specific and very substantial utility of improved security in 5+ billion daily payment transactions between computing devices is far more than enough to satisfy the "useful" requirement of 35 U.S.C. §101.” Examiner disagrees.
First, token generation is actually not “fundamentally technological in nature”, as prior to computer devices, the representation of information, tokens, were generated by human actors. The disclosure does not provide algorithms towards the generated tokens, or show how technology is being improved. Additionally, the authentication and authorization Applicant argues for within the transaction described are themselves abstract and don’t affect the functionality of the computing systems, just the business process. Applicant’s arguments highlight that the claims are drawn to, as argued by Applicant “the usefulness/utility of the improved transaction security”, which is drawn to mitigating risk in a transaction and more part of the business process, “it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology.” MPEP 2106.05(a) (II). The rejection is maintained.
112
Due to Applicant’s amendments, the rejections are withdrawn.
103
Applicant argues “It is respectfully submitted that the Office Action misinterprets what Silvestre discloses. The only thing that Silvestre discloses tokenizing is user identifying data, such as a transaction account number (in a payment token). Silvestre, 0039, 0042 ("The payment token may comprise user identifying data such as a transaction account number and/or the like."). Nothing else is tokenized by Silvestre. Further, Silvestre only discusses a single token, not multiple tokens.” Examiner disagrees.
First a token is a representation of information. The term “token” does not need to be used for there to be a representation of information. If in Silvestre the disclosure instead read “The payment (alias, widget, representation) may comprise user identifying data such as a transaction account number and/or the like”. It would still be understood that the “The payment (alias, widget, representation)” is a token that may comprise user identifying data such as a transaction account number and/or the like. Concluding that Silvestre does not discuss multiple tokens is incorrect.
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 “verifying…requesting generation of… 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 “verifying…requesting generation of… 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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6, 8 and 14-19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Silvestre (US 20200019961) (“Silvestre”).
Regarding claims 1, and 14, Silvestre discloses verifying an identity of a user having a payment device and a personal communication device (Abstract; ¶ 20, 27, 38-44);
Claim Interpretation – According to the disclosure(¶ 28), “The payment device 102 is interchangeably referred to as a card 102 and the personal communication device 103 as a smartphone 103 hereinafter.”
Silvestre - Merchant PoS 250 invokes local EMV payment application 245 (step 506). For example, in response to payment instrument 240 interfacing with merchant PoS 250, local EMV payment application 245 interacts with merchant PoS kernel 257 (step 508)… EMV payment application 125 may also be configured to perform cardholder verification, process transaction restrictions, perform merchant risk analysis and management, perform card action analysis (e.g., first card action analysis, second card action analysis, etc.), process the transaction request, complete the transaction request, and/or the like…. user device 105 may be authenticated using a one-time password, multi-factor authentication, and/or using any other suitable type of authentication (¶ 20, 27, 41)
requesting generation, retrieval or activation of a payment token associated with the payment device of the user (Abstract; ¶ 34, 36. 39-41);
Silvestre -merchant PoS kernel 257 may be configured to interact with local EMV payment application 245 to process data, prompt the user to select a transaction account to use for the transaction, determine the (remote) EMV payment application 125 to select based on the transaction account, generate a transaction request comprising at least a payment token and an EMV payment application URI corresponding to the selected (remote) EMV payment application 125, and/or the like. (¶ 39-41);
generating a merchant device token associated with a merchant and linked to the personal communication device of the user; and (¶ 35, 39, 42, 44)
Silvestre - Merchant PoS 250 generates a transaction request (step 510) based on the interaction of local EMV payment application 245 with merchant PoS kernel 257. The transaction request may comprise any suitable data related to the transaction, such as, for example, a payment token, a payment amount, a merchant ID, or the like. The payment token may comprise user identifying data such as a transaction account number and/or the like. The transaction request may comprise additional transaction identification information, which may be standardized codes or numbers indicating the characteristics of the transaction, such as, for example a merchant category code, a service establishment number, a geographic location code, a product code, a PoS terminal number, and/or the like. (¶ 42)
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 (Abstract; ¶ 6, 15, 28, 43, 45, 46; claim 14);
Silvestre - EMV payment application 125 may also be configured to generate EMV data, such as for example, a cryptogram that may transmitted to issuer system 130 and validated by issuer system 130 to authorize the transaction request. (¶ 43);
transmitting the cryptogram to an issuer to enable the issuer to authorize the transaction based on the cryptogram (¶ 15, 28, 43, 45, 46; claim 14);
Silvestre - issuer system 130, and/or payment network 107, may be configured to authorize, validate, and/or settle the transaction based on the transaction authorization request…issuer system 130 may be configured to validate the cryptogram generated by EMV payment application 125. Issuer system 130 may also update accounts receivable databases and settlement databases to reflect the transaction. (¶ 45);
Regarding claims 2 and 15, Silvestre discloses authenticating the merchant device token and attaching an authentication information with the merchant device token (¶ 35, 39, 42, 44).
Regarding claims 3 and 16, Silvestre discloses further comprising providing details of the payment device to the merchant before the transaction (Abstract; ¶ 34, 36. 39-43).
Regarding claims 4 and 17, Silvestre discloses directing the user to an authentication screen after the user provides the details of the payment device (¶ 20, 34, 36, 39, 41).
Regarding claims 5 and 18, Silvestre 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 (¶ 34, 39, 44, 74).
Regarding claims 6 and 19, Silvestre discloses authenticating the user by a personal identification number or biometric identification on the personal communication device (¶ 34, 39, 44, 53, 74, 103).
Regarding claims 8 and 11, Silvestre discloses 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 (¶ 20, 27, 43, 50, 71, 73, 78, 79).
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 9, 10, 12, and 13 rejected under 35 U.S.C. 103 as being unpatentable over Silvestre (US 20200019961) (“Silvestre”), and further in view of Spector et al. (US 20190370790) (“Spector”).
Regarding claim 9, Silvestre discloses verify an identity of a user having a payment device and a personal communication device, request generation of a payment token associated with the payment device of the user, generate a merchant device token associated with a merchant and 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, (Abstract; ¶ 20, 27, 36-44) 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 (Abstract; ¶ 6, 15, 28, 43, 45, 46; claim 14). Silvestre does not disclose a merchant server configured to. Spector discloses a merchant server configured to (¶ 40-46, 64, 71, 72, 98-102).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 Silvestre and Spector in order to provide secure authentication means for a transaction (Spector; ¶ 1-5).
Regarding claim 10, Silvestre discloses 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 (¶ 34, 39, 44, 53, 74, 103).
Regarding claim 12, Silvestre 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(¶ 15, 28, 43, 45, 46; claim 14).
Regarding claim 13, Spector discloses wherein the payment device is a payment card with a card number, expiry date, and a security code (¶ 64, 71, 72).
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”)
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.
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