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 .
Response to Arguments
Applicant's arguments filed 01/05/2026 have been fully considered but they are not persuasive.
With respect to U.S.C. 101 rejection, Applicant is of the opinion that claims are not directed to abstract idea. Claims provide a new and novel way to process transactions that ensure security and minimize “strain on the infrastructure”, “prevent degradation of the infrastructure”, “need less computing resources and energy” and “avoid target by bad actors” and susceptibility to compromise”. Claims reflect an improvement to the functionality of computer networks and transaction processing systems. Claims are similar to Enfish, LLC v. Microsoft Corp., Finjan, inc v. Blue Coat Systems Inc, BOSCOM Global Internet Service Inc. V. ATT&T Mobility LLC and DDR. Further, claims are similar to Example 35. However, Examiner respectfully disagrees.
The claims recite creating and initiating a transaction request based on a user profile and performing user authentication which is an abstract idea. Specifically, the claims recite “receive a user identifier…; securely transmit the received identifier to a plurality of …(CIV) provider; securely receive a plurality of CIV responses from the plurality….; determine a chronology of the timestamps…; determine a target CIV response…; and based on the determined target CIV response,…processing of the transaction …….”, which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP 2106) because the claims involve a series of steps of receiving a user identifier, securely sending user identifier to plurality of providers, securely receiving responses from provider based on user identifier, determining a chronology of the timestamps of the responses, determining the provider based on the response, performing user identity authentication which is a process that deals with commercial interactions. The additional elements of the claims such as, processor, memory, network connections, server, payment application and computer storage media merely use a computer as a tool to perform an abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of creating and initiating a transaction request based on a user profile and performing user authentication. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself.
Claims are not directed to any improvement to functioning of computing systems such as by minimizing “strain on the infrastructure”, “prevent degradation of the infrastructure”, “need less computing resources and energy”. Claims are directed to creating and initiating a transaction request based on a user profile and performing user authentication which is an abstract idea. Claims limitations do not determine any kind of a energy resources or computing resources or infrastructure. Applicant must also take into consideration that in order to view the claims as supplying an inventive concept the technological improvement must be present within the claims themselves (Accenture Global Servs., GmbH v. Guidewire Software, inc., 108 USPQ2d 1173 (Fed. Cir. 2013)), (Synopsys, inc. v. Mentor Graphics Corp... 120 USPQ2d 1473 (Fed. Cir. 2016). Additionally, specification does not provide any evidence that how the claims provide an improvement to functioning of computing systems. Appellant failed to provide persuasive arguments supported by any necessary evidence to demonstrate that one of ordinary skill in the art would understand that the disclosed invention improves technology.
Claims are not similar to Example 35 because claims do not disclose technical process where two devices are interacting and where the action of each device control other device to provide technical solution. The claims are directed to creating and initiating a transaction request based on a user profile and performing user authentication which is an abstract idea.
The claims are not in any way similar to Enfish (Enfish LLC v. Microsoft Corp) as the claims do not improve the function of the computer itself by providing increased flexibility, faster search times, and smaller memory requirements (Enfish at 1690) but merely recite creating and initiating a transaction request based on a user profile and performing user authentication.
Claims are not similar to Finjan v Blue Coat System, because the case of Finjan v Blue Coat System is clearly not applicable to the instant claims, as in Finjan v Blue Coat System where court determined that using the security profile in a particular way to enable more flexible virus filtering and greater user customization. Further, security profile enables the invention to protect the user against both previously unknown viruses and obfuscated code as compared to traditional virus scanning. On the other hand, the claims involve creating and initiating a transaction request based on a user profile and performing user authentication.
Claims are not similar to DDR Holdings, In the case of DDR Holdings, the claim addresses the problem of retaining Web site visitors from being diverted from a host’s web site to an advertiser’s Web site, for which the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer network". Here, however, the instant claim is directed to abstract idea of creating and initiating a transaction request based on a user profile and performing user authentication. Unlike the situation in DDR Holdings, Applicant did not identify any problem particular to computer networks and/or the Internet that claim allegedly overcome.
Claims are not similar to BASCOM (BASCOM Global Internet Service inc. v. ATT&T Mobility LLC.) because BASCOM is clearly not applicable to the instant claims as in BASCOM, where the court determined that there was an ordered combination of conventional components that provided for filtering of internet content based on the location of a filtering component in a network. On the other hand, claims creating and initiating a transaction request based on a user profile and performing user authentication which is a process that deals with commercial or legal interactions.
Therefore, the rejection is maintained.
Status of Claims
Claims 1-20 have been examined.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 8 and 15 recite “initiating processing of the transaction with the CIV provider associated with the determined target CIV response wherein the processing of the transaction comprises:2performing a user identity authentication operation via a digital payment application (DPA) associated with a payment network by transferring the user from the merchant site to the DPA; upon successfully authenticating the user, automatically returning the user to the merchant site: and automatically selecting a most recently used card with the CIV provider to complete the transaction”. The specification does not describe these limitations.
Specification discloses: At 710, the processor initiates processing of the payment request. The initiation uses the target CIV provider associated with the determined target CIV response and an account identifier associated with the most recent last used account timestamp of the determined target CIV response. (paragraph 0087) In some examples, initiating processing of the payment request includes performing a user identity authentication operation. In some such examples, the user identity authentication operation includes at least one of the following: user authentication using a password, user authentication using a one-time password (OTP), user authentication using Two-factor authentication (2FA), and user authentication using biometric authentication (See paragraph 0088) but does not describe transferring the user from the merchant site to the DPA; upon successfully authenticating the user, automatically returning the user to the merchant site: and automatically selecting a most recently used card with the CIV provider to complete the transaction.
Claims 1, 8 and 15 recite “transferring the user from the merchant site to the DPA and automatically returning the user to the merchant site”. The specification is silent with respect to any algorithm or flow chart to describe transferring a user (i.e. Human) from merchant site to DPA and then automatically returning the user (i.e. human) to the merchant site. (When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. MPEP 2161.01 (I).).
Claims 2-7, 9-14 and 16-20 are also rejected as each depends from claims 1, 8 and 15 respectively.
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 a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
In the instant case, claims 1-7, are directed to a system, claims 8-14 are directed to a computerized method and claims 15-20 are directed to one or more computer storage media. Therefore, these claims fall within the four statutory categories of invention.
The claims recite creating and initiating a transaction request based on a user profile and performing user authentication which is an abstract idea. Specifically, the claims recite “receive a user identifier…; securely transmit the received identifier to a plurality of …(CIV) provider; securely receive a plurality of CIV responses from the plurality….; determine a chronology of the timestamps…; determine a target CIV response…; and based on the determined target CIV response,…processing of the transaction …….”, grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP 2106) because the claims involve a series of steps of receiving a user identifier, securely sending user identifier to plurality of providers, securely receiving responses from provider based on user identifier, determining a chronology of the timestamps of the responses, determining the provider based on the response, performing user identity authentication which is a process that deals with commercial interactions. Accordingly, the claims recite an abstract idea (See MPEP 2106).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106), the additional elements of the claims such as, processor, memory, network connections, server and computer storage media merely use a computer as a tool to perform an abstract idea. Specifically, processor, memory, network connections, server and computer storage media perform the steps of receiving a user identifier, securely sending user identifier to plurality of providers, securely receiving responses from provider based on user identifier, determining a chronology of the timestamps of the responses, determining the provider based on the response, performing user identity authentication. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106), the additional elements of processor, memory, network connections, server and computer storage media, to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of creating a transaction request based on a user profile. As discussed above, taking the claim elements separately, processor, memory, network connections, server and computer storage media perform the steps of receiving a user identifier, securely sending user identifier to plurality of providers, securely receiving responses from provider based on user identifier, determining a chronology of the timestamps of the responses, determining the provider based on the response, performing user identity authentication. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of creating and initiating a transaction request based on a user profile and performing user authentication. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims further describe the abstract idea of creating and initiating a transaction request based on a user profile and performing user authentication. Specifically, claims 2-4, 7, 9-11, 14 and 16-17 and 20 describing the authentication operation, which is part of the abstract idea. Claims 5, 12, and 18, further describing filtering of response data and prompting user for an input which is part of the abstract idea of creating and initiating a transaction request based on a user profile. Claims 6, 13 and 19 further describing the request and conditions to initiate the transaction request which is part of the abstract idea of creating and initiating a transaction request based on a user profile. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/ZESHAN QAYYUM/Primary Examiner, Art Unit 3697