DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/12/2025 has been entered.
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the response to the RCE filed on 11/12/2025.
Claims 1 has been amended.
Claims 1-11 are pending, and 10-11 have been withdrawn.
Claims 1-9 have been examined.
Response to Arguments
Applicant's arguments filed with to claims 1-9 rejected under 35 USC § 101 have been fully considered but they are not persuasive.
Response to Arguments
Applicant argues #1:
Prong 1 of Step 2A
The claimed embodiments are directed to a computational system that is specially configured to modify merchant transaction processing requests according to payment protocols selected by users or merchants by reconfiguring merchant payment token data sets corresponding to the merchant transaction processing requests. The claimed embodiments receive, via at least one network communication system, and parse a select merchant payment token request data set to identify a select merchant payment token data set corresponding to the request data set and confirm the compatibility of selected payment protocols with the identified select merchant payment token data set. Upon confirmation, a select merchant token confirmation request data set is generated and routed, using the at least one network communication system, to the payment authorization management system for merchant transaction processing requests. The claimed embodiments then modify one or more merchant transaction processing requests by reconfiguring some select merchant payment token sets corresponding to the one or more merchant transaction processing requests. Then the payment for one or more transactions corresponding to the one or more merchant transaction processing requests is processed using a payment network communication system or protocol based on the reconfigured select merchant payment token data sets.
Applicant submits that the approach is directed to improve the functioning of a computer to be able to securely and efficiently modify how a transaction request is processed by reconfiguring select merchant payment token data sets. The claimed embodiments allow for merchant and user devices to independently designate payment protocols representing payment preferences and negotiate protocol and payment networks to be used in processing transaction requests through the reconfigured select merchant payment token data sets. See, for example, paragraph [00101] of the application as filed.
From a technical improvement perspective, this is especially valuable for improving security of information communicated in the process of modifying transaction requests. In particular, this is useful when sensitive information that is subject to fraudulent misuse needs to be communicated between the merchant device, the user device and the payment authorization system. The claimed embodiments provide an improved computational machine that can rapidly and efficiently modify transactional processes at any time to satisfy selected payment protocols without needing to provide any identifiers or sensitive details to the devices.
For example, paragraphs [00112] - [00113] of the application as filed provide (emphasis added):…
As another example, paragraph [0050] of the application as filed provides (emphasis added):…
In view of the above, representative claim 1 involves technical computer activities including parsing the select merchant payment token request data set using the secure select merchant payment token to identify a corresponding select merchant payment token data set in a database storing select merchant payment token data sets and confirm compatibility of at least one merchant-selected protocol with the corresponding select merchant payment token data set, routing the select merchant token confirmation request data set, using the at least one network communication system, to a payment authorization management system of merchant transaction processing requests, modifying one or more of the merchant transaction processing requests by reconfiguring one or more select merchant payment token data sets corresponding to the one or more merchant transaction processing requests, and processing payment, using a payment network communication system or protocol, for one or more transactions corresponding to the one or more merchant transaction processing requests based on the reconfigured select merchant payment token data sets. At least these features are directed to improving electronic payment networks to enable rapid and secure modifications to transaction requests by reconfiguring secure merchant payment token data sets according to selected payment protocols. These claimed features do not make sense outside the context of the computing environment and are rooted in computer technology.
The technical steps in the claims do not explicitly recite any mathematical relations, and claimed features relating to the processor parsing the select merchant payment token request data set using the secure select merchant payment token, routing the select merchant token confirmation request data set, using the at least one network communication system, to a payment authorization management system, and modifying one or more of the merchant transaction processing requests by reconfiguring one or more select merchant payment token data sets are not practically performed in the human mind. Furthermore, the on-the-fly modification of payment token data sets, routing token data sets to payment authorization management systems via network communication systems and processing payment using a payment network communication system or protocol only exist in a computing environment - all of which are rooted in computer technology. Accordingly, for at least these reasons, claim 1 does not recite a method of organizing human activity.
Examiners response:
The Examiner respectfully disagrees, with respect to the cited paragraphs, [0050], [0101], [0112-0113], these paragraphs do not describe the technical issues and are not indicative of a practical application or significantly more. [0050] improvement in the manner in which single or multiple forms and sources of payment to be used in completing a transaction can be agreed upon in advance, at the time of a transaction, and/or after the transaction has been confirmed, this is describing a commercial and legal interaction for sales activities, and then describes computer environment in which the idea is being limited too. Similarly in [0101], further describes commercial and legal interactions which provides for the user to initiate transactions and be funded using one or more debit and/or points accounts and then the merchant to request that payments drawn from such accounts be processed in accordance with EMV (Europay-Visa-MasterCard) and/or other credit protocols, and then furthers the transactions and data to be exchanged using generic computer components. [0112-0113] describe allowing a user to use a payment proxy as opposed to sending their account identifier (“Among the many advantages offered by the various aspects and embodiments of the invention is increased security, because bank and other funding source account numbers, which are in some circumstances subject to fraudulent misuse, need not be communicated between devices 120, 130, 110 at all; rather proxy identifiers such as "my checking account" or "my Merchant rewards account" can be exchanged, and mapped into actual routing and account information”), but for the recitation of generic computer components, again describing sales activities but the generic computer components. As MPEP 2106.05(f) Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone);. See also, Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log); in which the Courts in which the Court walked through the test and found the claims to be ineligible:
The Court identified the additional elements in the claim, e.g., by noting that the method claims recited steps of using a computer to "create electronic records, track multiple transactions, and issue simultaneous instructions", and that the product claims recited hardware such as a "data processing system" with a "communications controller" and a "data storage unit" (573 U.S. at 224-26, 110 USPQ2d at 1984-85);
The Court considered the additional elements individually, noting that all the computer functions were "‘well-understood, routine, conventional activit[ies]' previously known to the industry," each step "does no more than require a generic computer to perform generic computer functions", and the recited hardware was "purely functional and generic" (573 U.S. at 225-26, 110 USPQ2d at 1984-85);
With respect to applicant’s arguments that the claims do not explicitly recite any mathematical relations, the Examiner did not rely on the mathematical relations groupings of abstract ideas. With regards to the human mind, as an initial matter, just because an idea cannot be performed with a pen and paper or in the human mind does not mean it’s not directed towards an abstract idea and the Examiner did not rely on grouping the claims into the Mental Processes grouping of abstract ideas for the analysis. Furthermore Examiners are directed to continue to use the Mayo Alice framework (as laid out in MPEP 2106 which incorporates Steps 2A and Step 2B of the 2019 PEG) as guidance in evaluating subject matter eligibility, which the Examiner has properly applied.
Additionally, the Examiner respectfully disagrees that the claims are rooted in technology, rather the ideas claimed are being limited to the computer environment, as explained above the claims are directed towards abstract concepts invoking the additional elements as tools for the carrying out transaction and limiting the idea to the computer environment which does not amount to significantly more.
Applicant argues #2:
Prong 2 of Step 2A
Notwithstanding the above, even if Prong 1 is not satisfied, it is clear that the combination of the elements integrates the approach into a practical application. The proposed computer system describes a specific manner of reconfiguring select merchant payment token data sets to modify corresponding transaction requests according to payment protocols selected by users and merchants. This approach improves the functioning of a computer by providing improved electronic payment networks to enable rapid and secure modifications to transaction requests by reconfiguring secure merchant payment token data sets according to selected payment protocols. The claims describe an improved computer system that is configured to securely and efficiently modify how a transaction request is processed by reconfiguring select merchant payment token data sets. The claimed embodiments allow for merchant and user devices to independently designate payment protocols representing payment preferences and negotiate protocol and payment networks to be used in processing transaction requests through the reconfigured select merchant payment token data sets. This provides a specific improvement over alternate methods, such as traditional methods of transmitting payment information over conventional payment rails which would often involve sharing sensitive account information and identifiers and are unable to rapidly and efficiently incorporate input from merchants, users, and other parties involved in the transaction. See for example, paragraphs [0055], [0138] and [0192] of the present application. Accordingly, the present claims recite an improvement to the field of electronic payment technology including the technical means that allow for merchant devices and user devices to negotiate protocol and payment networks for payment tokens.
Moreover, the specifically-claimed use of negotiable payment tokens do not preclude the use of other types of tokens. Accordingly, the claims cannot be seen as monopolizing tokenization generally. While pre-emption may not be a standalone test, it is a strong indication that the claims are directed to a specific use (i.e., a practical application).
For at least the reasons above, the Applicant submits the current claims are not directed to the recited judicial exception and would furthermore provide integration of any alleged judicial exception into a practical application.
Examiners response:
The Examiner respectfully disagrees, [0055] describes setting payment preferences, [0138 describes checking that the accounts have adequate funding in the preferred accounts, and unless the Examiner is mistaken, there is no [0192]. With respect to converting between the payment protocols and cited paragraphs, this describing commercial and legal interactions for record keeping task to complete the transaction and therefor does not amount to improvement in technology or a practical application similar to Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log) and Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 115 USPQ2d 1636 (Fed. Cir. 2015) where methods comprising storing user-selected pre-set limits on spending in a database, and when one of the limits is reached, communicating a notification to the user via a device. 792 F.3d. at 1367, 115 USPQ2d at 1639-40 were determined by the Courts that the claims were directed to the abstract idea of "tracking financial transactions to determine whether they exceed a pre-set spending limit (i.e., budgeting)" and MPEP 2106.05(d) shows it's WURC to use an intermediary to sending and send and receive information (Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); ) It is noted “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). The instant application has been reviewed using the Subject Matter Eligibility test as laid out in MPEP 2106, and found to be directed towards an abstract idea without significantly more, therefor this argument is not persuasive.
Applicant argues #3:
Step 2B
Notwithstanding the above, the Applicant further notes that the claims provide significantly more than any purported judicial exception.
For example, in some situations, the specifically-claimed elements provide a networked merchant transaction management system which can enable merchant and purchaser devices to negotiate protocol and payment types for payment tokens contemporaneously with the processing of the transaction rather than statically such as in a traditional physical credit card transaction. The technical limitations in the claims can enable flexible and dynamic payment tokens to be generated and used. These features are substantially more than the conventional use of tokens.
Accordingly, the Applicant submits that the claims include substantially more than any purported abstract concept and provide improvements to the technical field of electronic payments technology.
As such, the claims are directed to patent eligible subject matter and comply with 35 USC 101.
Reconsideration and withdrawal of the rejections based on 35 USC 101 is respectfully requested.
Examiners response:
The Examiner respectfully disagrees, under Step 2B, the claims amounts to no more than mere instructions to apply the exception using generic computer components and limits the judicial exception to the particular environment, with respect negotiating a protocol, the protocol format of the payment and part of the abstract idea for a user to initiate transactions and be funded using one or more debit and/or points accounts (one protocol) and then merchant to request that payments drawn from such accounts be processed in accordance with EMV (Europay-Visa-MasterCard) and/or other credit protocol. Mere instructions to apply an exception using generic computer components and limiting the judicial exception to a particular environment does not provide an inventive concept. Additionally, MPEP 2106.05(d)(ii) provides that receiving and transmitting data over a network (see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network), and Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log); are WURC functions of computers, and there for the claims do amount to a technical improvement or significantly more.
For the reasons above, the 101 rejection is hereby maintained.
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 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more, and fails step 2 of the analysis because the focus of the claims is not on the devices themselves or a practical application but rather directed towards an abstract idea, the analysis is provided below.
Step 1 (Statutory Categories) - The claims pass step 1 of the subject matter eligibility test (see MPEP 2106(III)) as the claims are directed towards a system.
Step 2A – Prong One (Do the claims recite an abstract idea?) - The idea is recited in the claims, in part, by:
receive a select merchant payment token request data set, the select merchant payment token request data set comprising at least one secure purchaser identifier and a secure select merchant payment token;
parse the select merchant payment token request data set using the secure select merchant payment token to identify a corresponding select merchant payment token data set in a database storing select merchant payment token data sets and confirm compatibility of at least one merchant- selected protocol with the corresponding select merchant payment token data set, wherein the at least one merchant-selected protocol is associated with one or more purchaser-selected payment source identifiers;
upon confirming compatibility of the at least one merchant-selected protocol with the corresponding select merchant payment token data set, generate a select merchant token confirmation request data set, the select merchant token confirmation request data set comprising data representing at least the secure select merchant payment token; and the data representing at least one merchant-selected protocol associated with the one or more purchaser-selected payment source identifiers;
route the select merchant token confirmation request data set to a payment authorization management system of merchant transaction processing requests; and
modify one or more of the merchant transaction processing requests by reconfiguring one or more select merchant payment token data sets corresponding to the one or more merchant transaction processing requests: and
process payment, using a payment network communication system or protocol, for one or more transactions corresponding to the one or more merchant transaction processing requests based on the reconfigured select merchant payment token data sets.
The steps recited above under Step 2A Prong One of the analysis under the broadest reasonable interpretation covers commercial or legal interactions (including marketing or sales activities or behaviors; business relations) but for the recitation of generic computer components. That is other than reciting the network merchant transaction system which comprises at least one network communication system, at least one data processor, and at least one persistent memory device, and interacts/communicates with a purchaser communication device, and payment authorization management system nothing in the claim elements are directed towards anything other than commercial or legal interactions for receiving the payment token requestion data set, generating the select merchant token confirmation request and routing it to the payment authorization management system based on the merchant-selected payment protocol and token dataset for processing a corresponding transaction and payment. If a claim limitation, under its broadest reasonable interpretation, covers commercial or legal interactions, then it falls within the “Certain Methods of Organizing Human Activities” groupings of abstract ideas. Accordingly, the claims recite an abstract idea.
Step 2A – Prong Two (Does the claim recite additional elements that integrate the judicial exception into a practical application?) - This judicial exception is not integrated into a practical application. In particular, the claims only recite the additional elements of a network merchant transaction system which comprises at least one network communication system, at least one data processor, and at least one persistent memory device, which interacts/communicates with a purchaser communication device, and payment authorization management system. The network merchant transaction system which comprises at least one network communication system, at least one data processor, and at least one persistent memory device are recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components and limits the judicial exception to the particular environment of networked computers. Mere instructions to apply the judicial exception using generic computer components and limiting the judicial exception to a particular environment are not indicative of a practical application (see MPEP 20106.05(f) and MPEP 20106.05(h)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed towards an abstract idea.
Step 2B (Does the claim recite additional elements that amount to significantly more than the judicial exception?) - The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above, with respect to integration of the abstract idea into a practical application, using the additional elements of the network merchant transaction system which comprises at least one network communication system, at least one data processor, and at least one persistent memory device, to interact and communicate with a purchaser communication device, and payment authorization management system to perform the steps recited in Step 2A Prong One of the analysis amounts to no more than mere instructions to apply the exception using generic computer components and limits the judicial exception to the particular environment. Mere instructions to apply an exception using generic computer components and limiting the judicial exception to a particular environment does not provide an inventive concept. The additional elements have been considered separately, and as an ordered combination, and do not add significantly more (also known as an “inventive concept”) to the judicial exception. Further, MPEP 2106.05(d)(ii) provides that receiving and transmitting data over a network (see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network), and Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log); are well-understood routine and conventional, similar to the instant application claims which recites and sending and receiving data over network for receiving the payment token requestion data set, generating the select merchant token confirmation request and routing it to the payment authorization management system. The claims are not patent eligible.
The dependent claims have been given the full analysis including analyzing the additional limitations both individually and in combination as a whole. For instance, claims 2-9 are all steps that fall within the “Certain Methods of Organizing Human Activities” groupings of abstract ideas, further narrowing the abstract idea and generally linking the use of the judicial exemption to a particular technical computing environment. The Dependent claims when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. 101 for the same reasoning as above and the additional recited limitations fail to establish that the claims are not directed to an abstract idea. The additional limitations of the dependent claims when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY S CUNNINGHAM II whose telephone number is (313)446-6564. The examiner can normally be reached Mon-Fri 8:30am-4pm.
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GREGORY S. CUNNINGHAM II
Primary Examiner
Art Unit 3694
/GREGORY S CUNNINGHAM II/Primary Examiner, Art Unit 3694