DETAILED ACTION
This office action is in response to Applicant’s communication of 8/19/2025. Amendments to claims 1 and 3-20 have been entered. Claims 1-20 are pending and have been examined. The rejection and response to arguments are stated below.
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 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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims do fall within at least one of the four categories of patent eligible subject matter because claim 1 is directed to a process and claims 13-16 are directed to a system; Step 1-yes.
Under Step 2A, prong 1, representative claim 1 recites a series of steps for providing and validating a payment token to complete a payment which is a commercial or legal interaction, i.e. sales activities or behaviors, and thus grouped as “Certain Methods of Organizing Human Activity”. The claim as a whole and the limitations in combination recite this abstract idea. Specifically, the limitations of representative claim 1, in bold below and stripped of all additional elements, recite the abstract idea as follows.
1 (Currently Amended). A computer implemented method for securely processing a payment transaction, comprising:
a. requesting, by a user via a user device, a one-time transaction token from a payment provider system for a payment transaction initiated by the user;
b. in response to the request, generating, by the payment provider system, the one-time transaction token with token validation data, the token validation data being inserted within the one-time transaction token according to a defined validation computation policy;
c. storing, by the payment provider system, the one-time transaction token;
d. providing, by the payment provider system, the one-time transaction token to the user device;
e. providing, by the user device, the one-time transaction token to a transaction processing system;
f. providing, by the transaction processing system, the one-time transaction token to an acquirer processing system;
g. in response to receiving the one-time transaction token, identifying, by the acquirer processing system, the payment provider system that generated the one-time transaction token;
h. transmitting, by the acquirer processing system, the one-time transaction token to the identified payment provider system;
i. in response to receiving the one-time transaction token, validating, by the identified payment provider system, the received one-time transaction token with the one-time transaction token previously generated by the identified payment provider system, wherein the validating comprises:
applying an inverse of the defined validation computation policy to the one-time transaction token to obtain the token validation data;
checking the token validation data against stored validation data; and
if the token validation data and stored validation data match sufficiently, then flagging the one-time transaction token as validated;
j. in response to validating the one-time transaction token, generating, by the identified payment provider system, transaction payment data for the user; and
k. transmitting, by the identified payment provider system, the transaction payment data to the acquirer processing system for completing the payment transaction.
The claimed limitations, identified above, recite a process that, under its broadest reasonable interpretation, covers performance of a commercial or legal interaction, but for the recitation of generic computer components. That is, other than the mere nominal recitation of a user “device”, a payment provider “system”, a transaction processing “system” and an acquirer processing “system” in claim 1 and a data processing “apparatus” along with those additional elements found in claim 1 for claims 13, 14, 15 and 16, there is nothing in the claim element which takes the steps out of the methods of organizing human activity abstract idea grouping. The one-time transaction token is merely a representation of underlying payment data that mathematical computation algorithms are applied. Thus, claims 1 and 13-16 recite an abstract idea.
Under step 2A, prong 2, this judicial exception is not integrated into a practical application. In particular, the claim only recites using generic, commercially available, off-the-shelf computing devices, i.e. processors suitably programmed communicating over a generic network, to perform the abstract idea steps. The computer components are recited at a high-level of generality (i.e., as generic processors with memory suitably programmed and communicating information over a generic network, see at least Fig.2 and paragraphs [046-048] of the specification) such that it amounts no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea, see MPEP 2106.05(f) and generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05 (h). Furthermore, the step of “c. storing, by the payment provider system, the one-time transaction token;” is considered adding insignificant extra-solution activity to the judicial exception, see MPEP 2106.05 (g). Accordingly, the additional elements claimed do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Claims 3 and 13-16 are directed to an abstract idea.
Under step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using generic computer processors with memory suitably programmed communicating over a generic network to perform the limitation steps amounts no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea, see MPEP 2106.05(f) and generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05 (h). Furthermore, the step of “c. storing, by the payment provider system, the one-time transaction token;” is considered adding insignificant extra-solution activity to the judicial exception, see MPEP 2106.05 (g). Mere instructions to apply an exception using generic computer components interacting in a conventional manner cannot provide an inventive concept. Claims 3 and 13-16 are not patent eligible.
For instance, in the process of claim 1, the limitation steps, claimed at a high level of generality, recite steps that are considered mere instructions to apply an exception akin to a commonplace business method or mathematical algorithm being applied on a general purpose computer, Alice Corp. Pty. Ltd.; Gottschalk and Versata Dev. Group, Inc.; see MPEP 2106.05(f)(2). Furthermore, the insignificant extra-solution activity step relies on well-understood, routine and conventional computing functionality carried out by a generic processor with memory such as and data storage, akin to storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93; see MPEP 2106.05(d)(II).
Applicant has leveraged generic computing elements to perform the abstract idea of providing and validating a payment token to complete a payment, without significantly more.
Dependent claims 2-12 and 17-20 when analyzed as a whole and in an ordered combination are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea, as detailed below. The additional recited limitations in the dependent claims only refine the abstract idea.
For instance, claim 2 further refines the abstract idea by placing the business rule that the token data associated with the user can only be identified by the payment provider. There are no technical implementation details such that a human could not perform this step. Claim 3 further defines the abstract idea of the token validation data corresponds to certain stored data at a very high level of generality. Claim 4 merely recites the type of the user device or payment provider system stored which is not inventive nor significantly more than the abstract idea itself. Claim 5 further refines the validation step at a very high level of generality. Applying specific information in a mathematical algorithm is part of the abstract idea falling under mathematical concepts. Setting a time-expiring and redefined step do not provide any technical implementation details and are applying the abstract idea on a generic processor. Claims 6 and 17 further refine the abstract idea by reciting that the token, i.e. a digital representation, contains two sections that are concatenated such as seen in Fig. 4b which appears as just a sequence of numbers and letters in association. Claims 7 and 8 merely define the types of information contained in the two sections of the digital token. There are no technical implementation details such that a human interacting with a generic computer cannot complete this. Claims 9, 10, 18, 19 and 20 further define the validation computation policy by replacing or altering the bytes or substring at a very high level of generality such that this is merely a mathematical computation or algorithm performed via a generic computer. Claims 11 and 12 merely recite that the transmitting of the token to each entity occurs without any intervention between transmission steps. This has no effect on the abstract idea and is merely the transmission of data which is a well-understood, routine and conventional computing activity, akin to receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec,(utilizing an intermediary computer to forward information); TLI Communications LLC (using a telephone for image transmission); OIP Techs., Inc., (sending messages over a network) and buySAFE, Inc. (computer receives and sends information over a network), see MPEP 2106.05(d)(II).
Clearly, the additional recited limitations in the dependent claim only refine the abstract idea further. Further refinement of an abstract idea does not convert an abstract idea into something concrete.
The claims merely amount to the application or instructions to apply the abstract idea (i.e. a series of steps for providing and validating a payment token to complete a payment) on one or more computers, and are considered to amount to nothing more than requiring a generic computer system (e.g. processors suitably programmed and communicating over a network) to merely carry out the abstract idea itself. As such, the claims, when considered as a whole, are nothing more than the instruction to implement the abstract idea (i.e. a series of steps for providing and validating a payment token to complete a payment) in a particular, albeit well-understood, routine and conventional technological environment.
Accordingly, the Examiner concludes that 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 or integrate the judicial exception into a practical application.
Response to Arguments
Applicant’s arguments, see the Remarks filed 8/19/2025, with respect to the 35 U.S.C. 112(b) rejection, have been fully considered and are persuasive. The 35 U.S.C. 112(b) rejection has been withdrawn.
Applicant’s arguments, see the Remarks filed 8/19/2025, with respect to the 35 U.S.C. 102 rejection, have been fully considered and are persuasive. The 35 U.S.C. 102 rejection has been withdrawn.
Applicant’s arguments, filed in the Remarks filed 8/19/2025, with respect to the 35 U.S.C. 101 rejection, have been fully considered but they are not persuasive.
On page 17 of the Remarks, Applicant argues ‘“First, again using claim 1 as an example, claim 1 recites steps that cannot be performed in the mind and thus fall outside the "Mental Process" grouping of abstract ideas. For example, the human mind cannot: a. request, by a user via a user device,…”’ Examiner notes that these abstract idea steps do not fall under mental processes but under certain methods of human activity. For instance, Applicant leverages computing devices to perform and automate the abstract idea.
On page 19 of the Remarks, Applicant argues “Additionally, like the claims in Enfish, claim 1 is directed to an improvement in computer capabilities, namely, an improvement in the way computer processors operate to efficiently and optimally securely process payment transactions.” Examiner respectfully disagrees.
The Examiner does not see the parallel between the claims of the instant case and those of Enfish. In Enfish, the claims describe the steps of configuring a computer memory in accordance with a self-referential table, in both the method and system claims. The focus of the claims in Enfish is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database). Specifically, the claimed invention in Enfish achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements. Hence, the Enfish claims were not directed to an abstract idea. On the other hand, Applicant’s claims do not involve any improvements to another technology, technical field, or improvements to the functioning of the computer itself. The invention in Enfish was a technological solution to a technological problem (using self-referential table for a computer database rather than using conventional table for a computer database), whereas the Applicants’ invention is a business solution to an abstract idea leveraging technology as it was designed to improve providing and validating a payment token to complete a payment.
Simply executing an abstract concept on a computer does not render a computer "specialized," nor does it transform a patent-ineligible claim into a patent-eligible one. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1280 (Fed. Cir. 2012).
In Bilski and Alice, the specific features of the claimed method/system did not change the fact that the claims were drawn to an abstract idea. This interpretation of this abstract idea is based in light of the Alice decision and the updates in the MPEP. Hence the claims are drawn to an abstract idea.
On page 19 into 20 of the Remarks, Applicant further argues “Moreover, the combination of elements recited in claim 1 confine the claim to a particular useful application and do not preempt all other possible solutions to the problem solved by the claimed invention.” Examiner respectfully disagrees.
The Supreme Court in Alice Corp. cautioned that merely limiting the use of an abstract idea “to a particular technological environment” or implementing the abstract idea on a “wholly generic computer” is not sufficient as an additional feature to provide “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice Corp., 134 Supreme Court. at 2358 (citations omitted). Also, preemption is not a stand-alone test and any preemption concerns have been addressed by the Examiner through the application of the two-step framework. A specific abstract idea is still an abstract idea and is not eligible for patent protection without significantly more elements recited in the claim. In the present case, the claimed technology is nothing more than generic computer technology implementing an abstract idea through manipulation of data. In Alice the computer system was specifically programmed to execute the specifically claimed steps. It is noted that the issue is whether the claims preempt the abstract idea that is claimed. The abstract idea of the challenged claims is not only “providing and validating a payment token to complete a payment” in general, but also the specific type of “providing and validating a payment token to complete a payment”. That the present claims do not preempt the field of validating a payment token to complete a payment do not make them any less abstract. (See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (collecting cases); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) (generating tasks in an insurance organization). Also Ultramercial decision makes it clear that Patent Owner's arguments regarding pre-emption "are not a substitute for the proper two-part test under Alice".
On page 20 of the Remarks, Applicant further argues “Finally, Applicant respectfully submits that the Examiner has not demonstrated that any of the claimed elements "represents well-understood, routine, conventional activity" in accordance with the examination guidelines based upon the Berkheimer and Aatrix court decisions.” Examiner respectfully disagrees.
The steps of the claims, taken individually or as an ordered combination, have already been identified in the rejection above as corresponding to abstract ideas. The additional elements in the claims are a user “device”, a payment provider “system”, a transaction processing “system” and an acquirer processing “system”. Applicant’s specification at paragraph [046] discloses “The data transceiver is configured to communicate wired or wirelessly over a communications network, such as the internet, such that each of the aforementioned systems/devices can communicate with one another.” Paragraph [047] discloses “Any number of the aforementioned systems may be dedicated hardware or may be provisioned in a hosted computing system, for example, a cloud based computing system.” and paragraph [048] discloses “The user device 201 is an electronic device which may be a mobile device, a wearable device, or other computing device.” The claims at issue do not require any nonconventional computer, network, or other components, or even a non-conventional and non-generic arrangement of known, conventional pieces but merely call for performance of the claimed functions on a set of generic computer components. The elements of the instant process, when taken alone, each execute in a manner conventionally expected of these elements. The elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone.
According to the USPTO guidelines of April 19, 2018 incorporating the Berkheimer memo (Berkheimer memo, hereinafter),
In a step 2B analysis, an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following:
1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
2. A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).
4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional elements). This option should
be used only when the examiner is certain, based upon his or her personal knowledge, that the additional elements) represents well-understood, routine, conventional activity engaged in by those in the relevant art, in that the additional elements are widely prevalent or in common use in the relevant field, comparable to the types of activity or elements that are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. § 112(a).
The fact that a generic computing system, such as described above, can be suitably programmed to perform the claimed method without requiring any nonconventional computer, network, or other computing components, or even a “non-conventional and non-generic arrangement of known, conventional pieces” but instead merely call for performance of the claimed functions on a set of generic computer components, satisfies the Berkheimer memo requirement that the additional elements are conventional elements (as outlined in criterion 1 of the Berkheimer memo). Furthermore, Examiner has pointed to the computing functionality leveraged as well-understood, routine and conventional computing functionality, both individually and in combination, See MPEP 2106.05(d). The elements of the instant process, when taken alone, each execute in a manner conventionally expected of these elements. The elements of the instant process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. Hence these additional elements do not add anything significantly more than an abstract idea.
In light of the Alice decision and the guidance provided in the MPEP, the features listed in the claims, are not considered an improvement to another technology or technical field, or an improvement to the functioning of the computer itself. At best, these features may be considered to be a business solution, using computers, to a problem of providing and validating a payment token to complete a payment. The alleged benefits that Applicants argue are due to business decisions, leveraging programmed computers, rather than any improvement to another technology or technical field, or an improvement to the functioning of the computer itself. By relying on computing devices to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible (See Alice, 134 S. Ct. at 2359 “use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions” is not an inventive concept). As discussed in the rejection above, the components of the instant system, when taken alone, each execute in a manner conventionally expected of these components. At best, Applicant has claimed features that may improve an abstract idea. However, an improved abstract idea is still abstract, (SAP America v. Investpic *2-3 (‘“We may assume that the techniques claimed are “groundbreaking, innovative, or even brilliant,” but that is not enough for eligibility. Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); accord buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014). Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 89-90 (2012); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”’
There is a fundamental difference between computer functionality improvements on the one hand and uses of existing computers as tools to perform a particular task, on the other. There is nothing, for example, in the pending claims to suggest that the claimed a user “device”, a payment provider “system”, a transaction processing “system” and an acquirer processing “system”, all suitably programmed, are somehow made more efficient or that the manner in which these elements carry out their basic functions is otherwise improved in any way. The alleged advantages that Applicants argue do not concern an improvement in computer capabilities but instead relate to an alleged improvement providing and validating a payment token to complete a payment, for which a computer is used as a tool in its ordinary capacity.
In summary, the computer is merely a platform on which the abstract idea is implemented. Simply executing an abstract concept on a computer does not render a computer “specialized,” nor does it transform a patent-ineligible claim into a patent-eligible one. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1280 (Fed. Cir. 2012). There are no improvements to another technology or technical field, no improvements to the functioning of the computer itself, transformation or reduction of a particular article to a different state or thing or any other meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment as a result of performing the claimed method. The claimed sequence of steps comprises only “conventional steps, specified at a high level of generality,” which is insufficient to supply an “inventive concept.” Id. at 2357 (quoting Mayo, 132 S. Ct. at 1294, 1297, 1300). Also, the addition of merely novel or non-routine components to the claimed idea does not necessarily turn an abstraction into something concrete (See Ultramercial, Inc. v. Hulu, LLC, _ F.3d_, 2014 WL 5904902, (Fed. Cir. Nov. 14, 2014). Hence the claims do not recite significantly more than an abstract idea.
For these reasons and those stated in the rejections above, rejection of claims 1-20 under 35 U.S.C. 101 is maintained by the Examiner.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure are listed on the enclosed PTO-892.
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 CHRISTOPHER J BRIDGES whose telephone number is (571)270-5451. The examiner can normally be reached 7:00am-3:30pm M-F EDT.
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/CHRISTOPHER BRIDGES/Primary Examiner, Art Unit 3693