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 .
Examiner’s comment
This action is responsive to applicant’s amendment/response filed on 11/17/2025. Of the examined claims 21-40, the amendment amended the claims 21, 22, 30, 31 and 40. Therefore, the claims 21-40 are pending.
After careful consideration of applicant’s amendments and arguments, new ground of rejections of claims necessitated by applicant amendment has been established in the instant application as set forth in detail below. Applicant's arguments with respect to claims have been considered but are moot in view of the new ground(s) of rejection.
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.
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. 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), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. ____ (2014).
In the instant case, Claims 21-40 are directed to system and method for receiving an authentication credential and transmit the account holder information sufficient to complete transactions. The claims 21-40 are analyzed to see if claims are statutory category of invention, recites judicial exception and the claims are further analyzed to see if the claims are integrated into practical application if the judicial exception is recited and the claims provides an inventive as per 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) and October 2019 Update: Subject Matter Eligibility as set forth below:
Analysis:
Step 1: Statutory Category? This part of the eligibility analysis evaluates whether the claim falls within any statutory category. MPEP 106.03.
Claim 21 is directed to a system comprising a processor, for provisioning account information. The claimed system is therefore directed to a statutory category, i.e., a machine (a combination of device) (Step 1: YES).
Claim 30 is directed to a process i.e., a series of method steps or acts, of for provisioning account information which is a statutory categories of invention (Step 1: YES).
Claim 40 is directed to a non-transitory computer readable storage media, which is a manufacture. The claim, thus a statutory category of invention (Step 1: YES).
Step 2A - Prong 1: Judicial Exception Recited? This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04(II) and the October 2019 Update, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim. There are no nature- based product limitations in this claim, and thus the markedly different characteristics analysis is not performed. However, the claim still must be reviewed to determine if it recites any other type of judicial exception.
Claims 21, 30 and 40 are similar and they are then analyzed to determine whether it is directed to a judicial exception. The claim recite plurality of steps receiving and storing account holder information; receiving an account provisioning request; transmitting an authentication request to a user; receiving authentication credential.”
The limitations of receiving and storing account holder information, receiving an account provisioning request, transmitting an authentication request and receiving authentication credential, retrieving the account holder information; and transmitting the account holder information sufficient to complete one or more transactions as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind similar to Mortgage Grader, Inc., v. First Choice Loan Servcs.,with computer implemented method and system for anonymous shopping loan packages but for the recitation of generic computer components. That is, other than reciting “account administration processor/data processing system,” nothing in the claim element precludes the step from practically being performed in the mind and thus fall within the “mental processes” grouping of abstract idea set forth in the 2019 PEG. 2019 PEG Section I, 84 Fed. Reg. at 52. For example, but for the “a processor” language, “receiving and storing account holder information, receiving an account provisioning request, transmitting an authentication request and receiving authentication credential, retrieving the account holder information; and transmitting the account holder information sufficient to complete one or more transactions” in the context of this claim encompasses the user manually receiving and transmitting information.” The recitation of a processor in this claim does not negate the mental nature of these limitations because the claim here merely uses the processor as a tool to perform the otherwise mental processes. See October Update at Section I(C)(ii). Thus, the above limitations of recite concepts that fall into the “mental process” grouping of abstract ideas. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas (YES).
Step 2A - Prong 2: Integrated into a Practical Application? This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. 2019 PEG Section III(A)(2), 84 Fed. Reg. at 54-55.
Besides the abstract idea as described in Prong 1, the claim recites the additional elements of the processor performing “transmit, to a transaction administrator processor associated with the transaction administrator, an encrypted user datum, the user datum encrypted using encryption information shared with the transaction administrator processor; receive, from the transaction administrator processor, verification of the account” in system and method for facilitating account provisioning. The order combination elements of the claim is integrated into a practical application by providing a technical solution to verification of account holder having account by account query with encrypted cardholder datum for account processing system to compare to stored datum for each of the account holders and on finding matched hashed provides positive query response indicating associated transaction administrator has an account for the card holder (see Fig. 2; Specification: paragraph [0044])
The claims are eligible because it do not recite a judicial exception as per 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) and October 2019 Update of Subject Matter Eligibility. (YES).
Step 2B: Claim provides an Inventive concept? – Not Applicable.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or non-obviousness.
Claims 21-40 are rejected under 35 U.S.C. 103 as being unpatentable over Van Cleave et al., U.S. Patent No. 11,151,845 (reference A in attached PTO-892) in view of Newman et al., U.S. Pub No. 2020/0106613 (reference B in attached PTO-892) further in view of Deliwala et al.(reference cited but not relied in last office action), U.S Pub No. 2019/0147440 (reference E in attached PTO-892).
As per claim 21, Van Cleave et al. teach a system for provisioning account information, the system (see Fig. 1) comprising:
an account administrator processor associated with a primary account of a user,, wherein the account administrator processor (see Provisioning Device (18): Fig. 2, Computing Device (28) -> Processors (30): column 4, lines 24-48;column 5, lines 15-50; where Provisioning Device include processor to provision new financial account to trusted mobile customer mobile device having existing/primary account ) is configured to:
receive account holder information comprising at least primary account information; store, in an account information database, the account holder information (see Host Server (14) -> Account Database (8): column 4, lines 49-67 to column 5, lines 1-14; where host server receives and stores existing account information that is used for financial transactions including profile, behavioral and historical financial and account data);
receive an account provisioning request for a secondary account of the user with a transaction administrator (see Fig. 4, Step 402: column 15, lines 45-49; where account provisioning in requested from Account Provisioning Computing Device 18 in Fig. 1 for a new financial account 402);
transmit, to a user device, an authentication request; receive, from the user device, an authentication credential (see Fig . 1, Provisioning Device (18) -> Authentication Unit (20): Fig. 4, Pass Authentication Challenge (416); column 7, lines 15-61; column 15, lines 11-36; column 16, lines 33-53);
retrieve, from the account information database, the account holder information and transmit, to the transaction administrator processor, the account holder information, wherein the account holder information is sufficient to complete one or more transactions (see Fig. 1, Account Database (8), Host Server (14): column 4, lines 22-65; Fig. 2, History Check Unit (66), Location Check Unit (64), Risk Scoring Unit (62): column 10, lines 45 to 67 to column 11, lines 1-43; where Host Server 14 together with Provisioning Device (18) comprising Authentication Unit (20) works as transaction administrator sending provision request and receiving information from one or more banking system for provisioning a new account for a customer remotely based authentication factor received from trusted mobile device of a customer without customer to be physically present at a banking location accesses historical purchase, location/travel plan, behavior, shopping/purchase and customer intent inferred information related to account/account holder information and calculate risk score based on failed/successful authentication for successful completion access to account and executing/completing transactions/purchases).
Van Cleave et al. do not teach transmit, to a transaction administrator processor associated with the transaction administrator, an encrypted user datum and encryption information, the user datum encrypted using the encryption information, the encryption information comprising at least one selected from the group of an encryption algorithm and an encryption key; receive, from the transaction administrator processor, verification of the account.
Newman et al. teach transmit, to a transaction administrator processor associated with the transaction administrator, an encrypted user datum and encryption information, the user datum encrypted using the encryption information, the encryption information comprising at least one selected from the group of an encryption algorithm and an encryption key; receive, from the transaction administrator processor, verification of the account (see Fig. 12: paragraph [0049, 0057-0058, 0172-0178, 0120, 0124]; where encryption information include encryption key and encryption algorithm).
Deliwala et al. teach the user datum encrypted using the encryption information, the encryption information comprising at least one selected from the group of an encryption algorithm and an encryption key (see paragraph [0021 and 0039]).
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to allow transmit, to a transaction administrator processor associated with the transaction administrator, an encrypted user datum and encryption information, the user datum encrypted using the encryption information, the encryption information comprising at least one selected from the group of an encryption algorithm and an encryption key; receive, from the transaction administrator processor, verification of the account to Van Cleave et al. because Newman et al teaches including above features would compare the received encrypted datum with record data accessible to transaction administrator server for successful match and sending verification by activation of the account (Newman et al, Fig. 12, Step 1250; paragraph 0176-0177]).
As per claim 22, Van Cleave et al. teach claim 21 as described above. Van Cleave et al. further teach system, wherein
the authentication credential includes multi-factor information associated with the user primary account (see Fig. 1, Host Server (14), Authentication Unit (2): column 4, lines 23-40; column 5, lines 51-67).
As per claim 23, Van Cleave et al. teach claim 21 as described above. Van Cleave et al. further teach system, wherein
the action of transmitting the account holder information is carried out only in response to a positive authentication of the credential (See Fig. 4, Step 412: Yes -> Step 414 or Step 412: No -> Pass Authentication Challenge: column 17, lines 27-61; where customer is subjected to authentication challenge is location based authentication cannot be validated and access to new account and credentials is allowed only after positive authentication).
As per claim 24, Van Cleave et al. teach claim 21 as described above. Van Cleave et al. further teach system, wherein
the authentication credential includes at least one selected from the group of a password, passcode, and biometric (column 6, lines 12-25).
As per claim 25, Van Cleave et al. teach claim 21 as described above. Van Cleave et al. further teach system, wherein
the primary account information is at least one of the set consisting of a phone number and an email address (see column 11, lines 54-61; and column 15, lines 50-62).
As per claim 26, Van Cleave et al. teach claim 21 as described above. Van Cleave et al. further teach system, wherein
the account holder information is associated with a contactless card account (see col0mn 1, lines 12-19; where provisioning include defining authorized user of account of credit card which is accessed online using account holder information via a mobile device).
As per claims 27-28, Van Cleave et al. teach claim 21 as described above. Van Cleave et al. further teach system, wherein
the account administrator processor is further configured to display account holder information on a display associated with a user device; and the account administrator processor is further configured to receive a selection of account holder information via the display (see Fig. 1 and 2, customer and mobile device (4 and 6), Host Server (14): Computing Device -> User Interface (UI) Devices (32), Financial Terminal (12): User Interface (22), column 4, lines 27-45; column 10, lines 39-44 and column 9, lines 32-55; where computing devices of the host server perform operation of provisioning and authentication including display of account holder information on a display 6 of mobile device customer 4 and customer selects one or more new account options provided one or more banking systems/Financial Terminal (12)).
As per claim 29, Van Cleave et al. teach claim 21 as described above. Van Cleave et al. further teach system, wherein
the account administrator processor is further configured to open a first communication field consisting of at least one selected from the group of a near field communication (NFC), radio frequency identification (RFID), and Bluetooth (see Fig. 1, Network (10), Provisioning Device (18), Mobile Device (6), Host Server (14); Fig. 2, Computing/Provisioning Device (28), Communication Units (34): column 9, lines 32-43).
As per claim 30, Van Cleave et al. teach method for provisioning account information, the method comprising the steps as described in claim 1 above.:
As per claims 31-35 and 38, Van Cleave et al. teach claim 30 as described above. Claims 31-35 and 38 are rejected under same rational as the claims 23, 24, 22, 26, 25 and 29 respectively as described above.
As per claims 36-37, Van Cleave et al. teach claim 30 as described above. Van Cleave et al. further teach the method, wherein
the account holder information comprises a plurality of account holder information (see column 10, lines 39-44), wherein the method further comprises displaying account holder information on the display associated with a user device (see Fig. 1, User Mobile Device Display (6); and receiving a selection of the account holder information via the display (see Fig. 2, UI Device (32); column 9, lines 44-55, column 14, lines 39-40; column 15, lines 14-21; where account holder information for authentication is displayed and selected via display device).
As per claim 39, Van Cleave et al. teach claim 38 as described above. Van Cleave et al. further teach the method, wherein the authentication credential is received over the first communication field (of NFC) ((see Fig. 1, Network (10), Provisioning Device (18), Mobile Device (6), Host Server (14); Fig. 2, Computing/Provisioning Device (28), Communication Units (34): column 9, lines 32-43).
Van Cleave et al. do not teach the authentication credential is received over the first communication field from a contactless card.
Newman et al. teach the authentication credential is received over the first communication field from a contactless card (see Fig. 13, Step 1310 and 1320: paragraph [0180-0184]).
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to allow the authentication credential is received over the first communication field from a contactless card to Van Cleave et al. because Newman et al teaches including above features would waste of time for cardholder to calling or visiting website and entering /providing card number for login credentials for authentication with potential compromise of the account and susceptibility pf vulnerability and hackers attacks (Newman et al, paragraph [0003-0005]).
As per claim 40, Van Cleave et al. teach a non-transitory, computer readable medium comprising instructions that, when executed on a data processing system (see Fig. 2, Computing Device (28); Processors (30), Memory (36): column 18, lines 4-48) perform actions comprising steps as described in the claim 1 above.
Response to Arguments
New ground of rejections of claims necessitated by applicant amendment after careful consideration of applicant’s amendments and arguments, has been established in the instant application as described above. Applicant's arguments with respect to claims have been considered but are moot in view of the new ground(s) of rejection.
Conclusion
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.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosures. The following are pertinent to current invention, though not relied upon:
Chandoor et al. (U.S. Pub No. 2017/0201520) teach device push authentication.
Jiang et al. (U.S. Patent No. 9,756,505) teach utilizing authentication requests for on-demand provisioning of access-point accounts..
Jones et al. (U. S. Pub No. 2015/0186864) teach processing transactions using multiple application identifiers.
Leavy et al. (U.S. Patent No. 10,911,431) teaches local encryption for single sign-on.
Lopez (U,S. Pub No. 2017/0364903) teaches embedded cloud-based functionalities in a communication device.
Mori et al. (WO 99/46715) teach payment system and electronic purse unit.
Nicholas et al. (U.S. Pub No. 2017/0353353) teach provisioning a local analytics device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BIJENDRA K SHRESTHA whose telephone number is (571) 270-1374. The examiner can normally be reached 8:00AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas can be reached on (571) 270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Respectfully submitted,
/BIJENDRA K SHRESTHA/Primary Examiner, Art Unit 3691 February 17, 2026