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 .
Status of Claims
Claims 2, 6-7, 9, and 11-13 are cancelled while claims 1, 10, 14, 15, 17, 18, and 21-23 are amended. Claims 1, 3-5, 8, 10, and 14-23 filed April 20, 2026 are pending and are hereby examined.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/20/26 has been entered.
Claim Rejections - 35 USC § 101
4. 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.
5. Claims 1, 3-5, 8, 10, and 14-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
6. Step 1 Statutory Category: Claims 1, 3-5, 8, 10, and 14-21 are directed to a method, claim 22 is directed to a system, and claim 23 is directed to non-transitory computer-readable media, all of which are statutory classes of invention.
7. Step 2A – Prong 1: Judicial Exception Recited: Nevertheless, independent claims 1, 22, and 23 recite an abstract idea of authorizing a payment by a target party to a verifying party.
The independent claims 1, 22, and 23 recite the following limitations which fall under commercial or legal interactions:
…;
…;
performing a payment verification to verify a source of funds of the target party, and outputting a result of true on condition that the target passes the payment verification;
performing an identity verification to verify an identity of the target party, the identity verification comprising…:
- accessing response data stored in a data store in association with the identity of the target party, the data store being implemented in on a peer-to-peer publication medium… wherein the response data comprises either a) a stored instance of a physically unclonable function (PUF) response being a response to a PUF challenge, or b) an attestation comprising a transformation of the PUF response, wherein the PUF response is a result of the PUF challenge having been input, by a party other than the verifying party in a set-up phase preceding said method, into a PUF module comprising a PUF that includes… generates an unpredictable output for a given input… and which generated the stored PUF response in dependence on the challenge using the PUF;
- … sending a request comprising the PUF challenge to the target party, and in response receiving back a further instance of the PUF response; and
- … performing a comparison and outputting a result of true on condition of a match, the comparison comprising either a) comparing the stored instance of the PUF response with the further instance of the PUF response, or b) comparing the attestation with the same transformation applied to the further instance of the PUF response;
wherein the payment is authorized on condition that the outputs of both the payment verification and identity verifications is true, the authorization of the payment comprising authorizing… to execute the payment.
8. According to the MPEP, "Commercial interactions" or "legal interactions" include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. Clearly, of authorizing a payment by a target party to a verifying party falls under sales activities, therefore commercial or legal interactions. If the claim limitations, under the broadest reasonable interpretation, covers performance of the limitations as a commercial or legal interaction, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
9. Step 2A – Prong 2: Practical Application: This judicial exception is not integrated into a practical application because the claim as a whole merely recites authorizing a payment by a target party to a verifying party with generally recited computer elements such as a memory, electronic circuit, processing unit, verifying computer system, communication networks, blockchain network, target computer system, and electronic payment system which in these steps are recited at a high-level of generality such that it amounts to more than mere instructions to apply the exception using a generic computer component, and are merely invoked as tools for authorizing a payment by a target party to a verifying party. Accordingly, 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. Simply implementing the abstract idea on a generic computing environment is not a practical application of the abstract idea, and does not take the claim out of the Commercial or Legal Interactions subgrouping of Certain Methods of Organizing Human Activity grouping. The claims are directed to an abstract idea.
10. Step 2B – Inventive Concept: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered individually and as an ordered combination, they do not add significantly more (also known as “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of a memory, electronic circuit, processing unit, verifying computer system, communication networks, blockchain network, target computer system, and electronic payment system to perform these steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Accordingly, these additional elements, do not change the outcome of the analysis, when considered individually and as an ordered combination as there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claims are not patent eligible.
11. Regarding dependent claims 3-5, 8, 10, 16-17, and 19-20, these claims merely narrow the abstract idea of authorizing a payment by a target party to a verifying party, and these claims neither integrate into a practical application nor contain additional elements which amount to significantly more than the abstract idea.
12. Regarding dependent claims 14-15 and 18, although there is a generally recited blockchain and blockchain network, these claims neither integrate into a practical application nor contain additional elements which amount to significantly more than the abstract idea.
13. Regarding dependent claim 21, although there is a point-of-sale terminal, this claim neither integrates into a practical application nor contains additional elements which amount to significantly more than the abstract idea.
14. Therefore, the limitations of the claims, when viewed individually and in ordered combination, are directed to ineligible subject matter.
Examiner Notes
15. Claims 1, 3-5, 8, 10, and 14-23 are novel and unobvious over the prior art, however, there remains a pending 35 U.S.C. 101 rejection. After further search and consideration, the most pertinent U.S. prior art was found to be Youb et al (US 2022/0261882), which is directed to creating commodity assets from blockchain and distributed ledger technology. Meanwhile, Mars et al (Fair Exchange and Anonymous E-Commerce by Deploying Clone-Resistant Tokens, NPL), which discloses clone-resistant tokens, was found to be the most pertinent NPL prior art.
16. However, both the most pertinent U.S. prior art and NPL fail to disclose all of the limitations particularly:
- accessing response data stored in a data store in association with the identity of the target party, the data store being implemented in third party computer equipment of a trusted third party or on a peer-to-peer publication medium, wherein the response data comprises either a) a stored instance of a response to a challenge, or b) an attestation comprising a transformation of the response;
- sending a request comprising the challenge to the target party, and in response receiving back a further instance of the response; and
- performing a comparison and outputting a result of true on condition of a match, the comparison comprising either a) comparing the stored instance of the response with the further instance of the response, or b) comparing the attestation with the same transformation applied to the further instance of the response;
wherein the payment is authorized on condition that the outputs of both the payment verification and identity verifications is true.
17. No prior art cited here or in any previous Office Action neither fully anticipates nor supports a conclusion of obviousness with respect to the subject matter present in the independent claims, either alone or in combination. The limitations lacking in the prior art, in combination with the other limitations clearly claimed in the application, are novel and unobvious.
18. The Examiner suggests expounding upon what payment verification, identity verification, and response data could be, and what exactly is being compared. The Examiner suggests incorporating claims 6, 13 (dependent on 12), and 21 together into all of the independent claims to overcome current rejections. Finally, the Examiner suggests incorporating more hardware from the Specification and any unique arrangements of hardware, unique hardware, or unique ways the hardware is communicating. The aforementioned claim suggestions, in combination together, is suggested to help advance prosecution forward, although further search, examination, and consideration is required.
Response to Arguments
19. Applicant's arguments filed 4/20/26 have been fully considered but they are not persuasive.
a) Argument #1: Applicant argues claim is directed to more than a mere drafting effort to monopolize a judicial exception
20. The applicant argues that there is a practical application of the judicial exception under Step 2A Prong 2 because it is not monopolizing all possible methods for authorizing a payment by a target party to a verifying party The Examiner respectfully notes that the determination of whether claims include features that are a drafting effort designed to monopolize the abstract idea is not a separate analysis, but rather a conclusion that is reached after consideration of prong 2 and recognizing a lack of integration of the claims into a practical application. Applicant’s additional arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims defines patent eligible subject matter.
21. According to the MPEP: “In contrast, the claims in Alice Corp. v. CLS Bank International did not meaningfully limit the abstract idea of mitigating settlement risk. 573 U.S. 208, 110 USPQ2d 1976 (2014). In particular, the Court concluded that the additional elements such as the data processing system and communications controllers recited in the system claims did not meaningfully limit the abstract idea because they merely linked the use of the abstract idea to a particular technological environment (i.e., "implementation via computers") or were well-understood, routine, conventional activity recited at a high level of generality. 573 U.S. at 225-26, 110 USPQ2d at 1984-85. Similarly, in this case, the abstract idea of authorizing a payment by a target party to a verifying party is linked to generally recited devices, therefore, the claims are not meaningfully limiting the abstract idea. Therefore, the claims do not integrate into a practical application either by improvement to a computer/technology/technical field, nor do they impose a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception.
22. The applicant argues that the claims impose a meaningful limit on the judicial exception, however the Examiner respectfully disagrees. Under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)). Here, the claims recite a memory, electronic circuit, processing unit, verifying computer system, communication networks, blockchain network, target computer system, and electronic payment system configured to perform claim functions and steps such that they amount to no more than mere instructions to apply the exception using generic computer components.
23. The claims are not directed to any improvement in computer technology. Claims are directed to an abstract idea of authorizing a payment from a target party to a verifying party. Applicant must take into consideration that in order to view the claims as supplying an inventive concept the technological improvement must be present within the claims themselves (Accenture Global Servs., GmbH v. Guidewire Software, inc., 108 USPQ2d 1173 (Fed. Cir. 2013)), (Synopsys, inc. v. Mentor Graphics Corp... 120 USPQ2d 1473 (Fed. Cir. 2016). Additionally, the Specification does not provide any evidence that how the claims provide an improvement to functioning of computing systems or technology. Applicant failed to provide persuasive arguments supported by any necessary evidence to demonstrate that one of ordinary skill in the art would understand that the disclosed invention improves technology.
24. Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself. The dependent claims do not resolve the deficiency of the independent claims and accordingly stand rejected under 35 U.S.C. 101 based on the same rationale.
Conclusion
25. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Mars et al (Fair Exchange and Anonymous E-Commerce by Deploying Clone-Resistant Tokens, NPL) is found to be the most pertinent NPL prior art.
26. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FAWAAD HAIDER whose telephone number is (571)272-7178. The examiner can normally be reached Mon-Fri 8 AM to 5 PM.
27. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
28. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Florian Zeender can be reached on 571-272-6790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FAWAAD HAIDER/Primary Examiner, Art Unit 3627
Prosecution Insights