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
This action is in reply to the amendment filed 06/11/2026.
Claims 1-20 are pending and have been examined on the merits (claims 1, 8, and 15 being independent) and no claim amendments have been added.
The amendment filed 06/11/2026 to the claims has been entered.
Response to Arguments
Applicant’s arguments and amendment filed 06/11/2026 have been fully considered.
Applicants assert that the pending claims fully comply with the requirement of 35 U.S.C. 101. Examiner respectfully disagrees. Applicant’s arguments have been considered and are not persuasive. The rejections under 35 U.S.C. 101 have been maintained and clarified in view of the USPTO MPEP 2106.
Applicant arguments (see Applicant’s remarks, pages 10-15):
(1) Applicant's arguments that “Here, the Office's analysis dismisses the specific cryptographic verification mechanism-including the encrypted security blocks, merchant specific security keys, and two-layer verification-as generic computer implementations without adequate explanation of why these specific technical elements do not constitute a technological improvement.” (see remarks, page 12), are not found persuasive.
Response (1): Examiner considers that the cited limitations as drafted are methods that, under their broadest reasonable interpretation, covers performance of a method of organizing human activity, but for the recitation of the computer components (e.g., encrypting the card data and decrypting the encrypted card data using an encryption key). Further, the instant recited claims do not improve the functioning of the computer or improve another technology or technical field nor do they recite meaningful limitations beyond generally linking/applying the use of an abstract idea to a particular technological environment (i.e. encrypting and decrypting data using an encryption key). That is, the claims recite to verify a transaction with a payment card using an encryption key {a string of characters used by cryptographic algorithms to encode and decode data, ensuring that only authorized parties can access the information} and Examiner fails to find an evidence of a technological improvement but generating an encryption key and merely using it to verify the card transaction at merchant. Therefore, Applicant’s arguments are not persuasive.
(2) Applicant's arguments that “The claims recite a technological solution to a technological problem, similar to the claims found eligible in DDR Holdings, BASCOM, and Thales Visionix as cited in the Desjardins memorandum.” (see remarks, page 12), are not found persuasive. (see Responses: a-c)
Response (a): In DDR, the claims here are not like those the Court found patent eligible in DDR, in which the inventive concept was in the modification of conventional mechanics behind website display to produce a dual-source integrated hybrid display because applicant’s claims here do not address problems unique to the Internet or require an arguably inventive device or technique for displaying information. So, DDR has no applicability.
Response (b): In BASCOM, when analyzing the claims under step 2B Examiner’s search for an inventive concept that can amount to significantly more, such as improvements to the functioning of a computer, improvements to any other technology or technical field, applying the judicial exception with, or by use of, a particular machine, effecting a transformation or reduction of a particular article to a different state or thing, adding a specific limitation other than what is well-understood, routine, conventional activity in the field, or adding unconventional steps that confine the claim to a particular useful application, e.g., a non-conventional and non-generic arrangement of various computer components for filtering Internet content, as discussed in BASCOM, or other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment (see MPEP 2106.05). Therefore, BASCOM has no applicability.
Response (c): Examiner respectfully disagrees, in Thales Visionix the Courts concluded that the claims specify a particular configuration of inertial sensors and a particular method of using the raw data from the sensors in order to more accurately calculate the position and orientation of an object on a moving platform. And further, that the mathematical equations are a consequence of the arrangement of the sensors and the unconventional choice of reference frame in order to calculate position and orientation. Far from claiming the equations themselves, and concluded the claims seek to protect only the application of physics to the unconventional configuration of sensors as disclosed in Thales Visionix, positively claiming the sensor arrangement, as recited in the independent claims of Thales Visionix Claims 1 and 22. So, Thales Visionix has no applicability.
(3) Applicant's arguments that “Claims 8 and 15 recite the two-layer verification process where the transaction processing device first attempts to decrypt the encrypted security block using a merchant-specific security key, rejects the transaction upon unsuccessful decryption, and upon successful decryption determines whether the decrypted card RID matches a merchant RID stored in the device memory. This specific ordered combination of claim elements reflects the improvement disclosed in the Specification.” (see remarks, page 14), are not found persuasive.
Response (3): Examiner considers that the instant recited claims including additional elements (i.e., a card data processor, a card memory, a transaction processing device, a transaction card communication interface, transaction processor encryption key, a transaction card communication interface, communication over a network, a point-of-sale (POS) transaction processing device, a transaction processor memory, card-unique chip card, and card manager encryption key) do not improve the functioning of the computer or improve another technology or technical field nor do they recite meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Further, the limitations merely use a generic computing technology (see specification ¶ [0042]) as generally linking the use of the judicial exception to a particular technological environment or field of use - see MPEP 2106.05(h) or apply it 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 an abstract idea - see MPEP 2106.05(f). Furthermore, using a POS device in offline mode itself does not improve the functioning of the POS device and contain a technological improvement. As such, Applicant’s arguments are not persuasive.
(4) Applicant's arguments that “Here, the ordered combination of claim elements confers a technological improvement by enabling POS devices to authenticate merchant-specific transaction cards locally without network connectivity- a capability that addresses the specific technical problem identified in the Specification.” (see remarks, page 15), are not found persuasive.
Response (4): Examiner considers that none of the limitations recite technological implementations details for any of the steps but, instead, only recite broad functional language being performed by making an encrypted security block and decrypting the encrypted security block. The instant recited claims do not improve the functioning of the computer or improve another technology or technical field nor do they recite meaningful limitations beyond generally linking/applying the use of an abstract idea to a particular technological environment (i.e. encrypting and decrypting data using an encryption key for the card transaction verification). Therefore, Applicant’s arguments are not persuasive.
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 non-statutory subject matter without significantly more.
When considering subject matter eligibility under 35 U.S.C. 101, (1) 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, (2a) 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 (2b), 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; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. (2014).
The claimed invention is directed to a judicial exception (i.e. a law of nature, a natural phenomenon, or an abstract idea) without significantly more. In the instant case, the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
Step (1): In the instant case, the claims are directed towards to a method for providing a merchant transaction card and processing a transaction request which contains the steps of obtaining, associating, constructing, transmitting, provisioning, loading, and providing. The claim recites a series of steps and, therefore, is a process. The claims do fall within at least one of the four categories of patent eligible subject matter because claims 1 and 8 are direct to a method and claim 15 is direct to a device, i.e. machines programmed to carrying out process steps, Step 1-yes.
Step (2A) Prong 1: A method for providing a merchant transaction card and processing a transaction request is akin to the abstract idea subject matter grouping of: Certain Methods of Organizing Human Activity as fundamental economic principles or practices and/or commercial or legal interactions. As such, the claims include an abstract idea.
The specific limitations of the invention are (a) identified to encompass the abstract idea include: {… provisioning a merchant transaction card…, obtaining, by a card account management system associated with a financial institution, a registered identifier (RID) uniquely associated with the financial institution and a merchant; associating, by the card account management system, chip card information with a card account associated with an account holder, the chip card information including a unique chip card identifier; constructing … using the RID and the card-unique chip card information, …. encrypt at least a portion of the chip card information and the RID …. offline store and forward mode to authenticate the merchant transaction card locally …. using a corresponding merchant-specific security key; transmitting, by the card account management system to a provisioning data processing system, the chip card information, the RID, …. account holder information associated with the account holder; loading …, the chip card information, the RID, …; loading …. a transaction processing entity; providing the provisioned merchant transaction card to the account holder.}
As stated above, this abstract idea falls into the (b) subject matter grouping of: Certain Methods of Organizing Human Activity as fundamental economic principles or practices and/or commercial or legal interactions as obtaining the data associated with the financial institution and a merchant, making an encryption key based on the data, provisioning the merchant transaction card, and providing the provisioned card to the account holder.
Step (2A) Prong 2: The instant claims do not integrate the exception into a practical application because additional elements: 1) “a card data processor” and “a card memory” amount to simply applying the abstract idea to a computer component. (e.g. “apply it”) 2) “encrypted security block” and “card manager encryption key” also amount to simply applying the abstract idea to a computer program. (e.g. instructions to “apply it”) do not apply, rely on, or use the judicial exception in a manner that that imposes a meaningful limitation on the judicial exception (i.e., generally linking the use of the judicial exception to a particular technological environment or field of use - see MPEP 2106.05(h) or apply it 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 an abstract idea - see MPEP 2106.05(f)).
The instant recited claims including additional elements (i.e., a card data processor, a card memory, a transaction processing device, a transaction card communication interface, transaction processor encryption key, a transaction card communication interface, a network, a point-of-sale (POS) transaction processing device, a transaction processor memory, card manager encryption key, an encrypted security block, merchant-specific security key) do not improve the functioning of the computer or improve another technology or technical field nor do they recite meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The limitations merely use a generic computing technology (Specification paragraphs [0042]: an issuer bank server, an American National Standards Institute ("ANSI") server, a merchant transaction processing machine via a network, merchant transaction processing machine, communication with PLCC via physical or touchless interface, a network- enabled computer, a computer device, or communications device including, e.g., a server, a network appliance, a personal computer, a workstation, a phone, a handheld PC, a personal digital assistant, a contactless card, etc. ) as generally linking the use of the judicial exception to a particular technological environment or field of use - see MPEP 2106.05(h) or apply it 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 an abstract idea - see MPEP 2106.05(f)). Therefore, the claims are directed to an abstract idea
Step (2B): The claims do 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 (Claims: e.g., a card data processor, a card memory, a transaction processing device, a transaction card communication interface, transaction processor encryption key, a transaction card communication interface, a network, a point-of-sale (POS) transaction processing device, a transaction processor memory, card-unique chip card, card manager encryption key, an encrypted security block, merchant-specific security key) amount to no more than mere instructions to apply the exactly using generic computer component. The claim elements when considered separately and in an ordered combination, do not add significantly more than implementing the abstract idea.
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. 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). In conclusion, merely “linking/applying” the exception using generic computer components does not constitute ‘significantly more’ than the abstract idea. (MPEP 2106.05 (f)(h)). Therefore, the claims are not patent eligible under 35 USC 101.
Dependent claims 2-7, 9-14, and 16-20 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, in claim 2, the step of “… encrypting at least a portion of the chip card information by the card account management system...” (i.e., encrypting data), in claim 3, the step of “… wherein the at least a portion of the chip card information is encrypted….” (i.e., encrypting data), in claim 4, the step of “… encrypting the RID by the card account management system prior...” (i.e., encrypting data), in claim 5, the step of “… encrypting the RID by the card account management system prior...” (i.e., encrypting data), in claim 6, the step of “… encrypting the RID by the card account management system prior...” (i.e., encrypting data), in claim 7, the step of “… encrypting the RID by the card account management system prior...” (i.e., encrypting data), in claims 9 and 17, the step of “… determining, …., whether the card information includes an encrypted security block….; attempting to decrypt the encrypted security block using a merchant-unique security key, wherein the action of allowing the POS transaction to continue processing …” (i.e., decrypting data), in claims 10 and 18, the step of “… denying the POS transaction...” (i.e., denying a transaction), in claims 11 and 18, the step of “… denying the POS transaction ...” (i.e., denying a transaction), in claim 12, the step of “… wherein the merchant-unique security key is generated...” (i.e., making a key), in claims 13 and 19, the step of “… wherein the encrypted security block includes encrypted account holder information...” (i.e., encrypting data), in claims 14 and 20, the step of “… encrypting at least a portion of the transaction information using the merchant-unique security key, ...” (i.e., encrypting data), and in claim 16, the step of “… responsive to a determination that the card RID does not match the merchant RID, and refuse the POS transaction ...” (i.e., matching identifiers ) are all processes that, under its broadest reasonable interpretation, covers performance of a fundamental economic practice but for the recitation of a generic computer component. Processing a merchant account card transaction request at the merchant is a most fundamental commercial process.
This is an abstract concept with nothing more and is also 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).
In dependent claims 2-7, 9-14, and 16-20, the step claimed are rejected under the same analysis and rationale as the independent claims 1, 8, and 15 above. Merely claiming the same process providing a merchant transaction card to process a merchant transaction request at a merchant (e.g., point of sale (POS)) does not change the abstract idea without an inventive concept or significantly more. Clearly, the additional recited limitations in the dependent claims only refine the abstract idea further. Further refinement of an abstract idea does not convert an abstract idea into something concrete.
Therefore, claims 1-20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Conclusion
The prior art made of record but not relied upon herein but pertinent to Applicant’s disclosure is listed in 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 extension fee 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 YONG S PARK whose telephone number is (571)272-8349. The examiner can normally be reached on M-F 9:00-5:00 PM, EST.
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/YONGSIK PARK/Examiner, Art Unit 3694 August 4, 2026
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694
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