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 .
This communication is a Final Office Action in response to Applicant’s amendment filed on July 6, 2026.
Claims 1-20 have been examined in this application.
No information disclosure statements (IDS) have been filed.
Response to Arguments
Applicant's arguments filed 07/06/2026, pages 9-12, regarding claim rejection sunder 35 U.S.C. 101 have been fully considered but they are not persuasive.
Applicant argues that the claimed server performing key functions that are not directed to an abstract idea nor to the mental processes abstract category. “A person using pen and paper cannot transform a payment credential and corresponding payment account into a cryptographically bound provisioned data structure, cannot bind that data structure to a user device using device-associated cryptographic keys including a device-specific key stored in a secure element, and cannot update a payment-account balance represented by that cryptographically bound data structure in the claimed server-side credential architecture.” Id., 10.
Under Step 2A, Prong II, Applicant further argues that any alleged abstract idea is transformed into a practical application. The claims are argued as capturing a particular use of cryptographic device binding in a payment flow, updating of the account based on the encrypted structure, which are based on a specific data structure. Applicant also argues that the ordered combination is not a generic instruction that amounts to merely applying the abstract idea on a computer because the claims capture a concrete mechanism based on binding and merchant data to regulate use and update payment account data; id, 11.
The Examiner respectfully disagrees. The claims are analyzed under the broadest reasonable interpretation (BRI). Claim analysis under MPEP 2106 is followed in order to determine claim eligibility under 35 U.S.C. 101. Once the claims are determined to be directed to a judicial exception, the claims are then analyzed under Step 2A, Prong I to determine whether the claims recite a judicial exception and to determine which related groupings of an abstract idea the abstract idea falls under. The claims are determined to be directed to an abstract idea of authorizing a payment amount based on rules and updating the balance of a payment account without significantly more. The claims are directed to a server system and what the server system does. Therefore, and under BRI, any limitations directed to entities outside of the server system will not be granted any patentable weight as they are outside the scope of the claims. However, assuming arguendo that the user device and related limitations are given weight, the claimed scope as a whole is still deemed as directed to an abstract idea without significantly more.
The abstract idea is found to fall clearly under two abstract idea groupings; certain methods of organizing human activity and mental processes. The abstract idea is further found characterizable under commercial interactions including sales activities or behaviors, and business relations. Under mental processes, the claims capture concepts performed in the human mind such as observation, evaluation, judgement, opinion, and carrying out these concepts using pen and paper. The elements argued by the Applicant are in fact possible to be carried out using a human mind and pen and paper. Storing data securely on paper or on a human mind, generating a payment credential using a human mind and pen-and-paper is possible, and communication between entities can also be done between humans. Setting transaction rules is also a human element carried out by a human mind. The claimed scope is clearly directed to business relations and sales activities as the claims focus on the settlement of a transaction between entities and using transaction rules.
In continuation with the claim eligibility analysis Step 2A, Prong II, the claims are not found to amount to a practical application; see MPEP § 2106.05(a)-(c), (e)-(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong II”). The Examiner notes that these are the additional elements found in the claims (including the user device): A server system, a memory, a processor circuit, non-transitory computer-readable medium storing instructions, a merchant system, a user device having a secure element storing a device-specific key, one or more cryptographic keys, and a data structure cryptographically bound to the user device. The additional elements are recited at a high level, performing functions that are generic functions carried out by any off-the-shelf computer/device and amounting to merely being utilized to automate the abstract idea. The functions include receiving and sending data, manipulating/generating data, analyzing data, and outputting an outcome before updating data. Each of the additional elements/limitations are no more than mere instructions to apply the exception using generic computer components or a generic device. Accordingly, even in combination, the 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. More so, the claimed abstract idea amounts to a mere linking of the use of the judicial exception to a particular technology or field of transaction settlement using devices and rules and generated payment credentials. The claimed server is not improved, nor do the claims capture any improvement to a technical field or technology.
The cryptographic mechanism recited in the claim is nothing more than a basic high-level formula used to encrypt data. There is nothing novel, unique, or improved by the cryptography recited in the claim. Likewise, the user device is a generic device having storage means to store cryptographic basic data/keys. Associating a key to a device is the same as associating a social security number to a human and using said number to perform generic high level cryptographic operations, which as explained can be done using a human mind and further highlight the sales activities associated with settling transactions.
MPEP 2106.05(a) requires the Specification to describe an improvement to computer functionality or another technology or technical field, in enough detail that a person of ordinary skill in the art would recognize such an improvement, wherein the improvement must be captured by the claims. The Specification at Paragraph 0016 clearly captures an entirely commercial solution instead of a technical solution such as a reduction in latency, reduction in processing of the transaction based on communication advancements, reduction in memory cost, no security improvement mechanism; see Universal Secure Registry v. Apple, 10 F.4th 1342 (fed. Cir. 2021).
Finally, regarding Applicant’s order combination arguments, the MPEP 2106.05(d)(I) does not apply here because the claimed sequence amounts to an abstract idea carried out in the only order in which it could occur; Alice Corp v. CLS Bank, 573 U.S. 208, 225 (2014).
Under 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 amount to merely instructions to apply the exception using generic computer components. The claim limitations do not improve another technology or technical field, improve the functioning of a computer itself, apply the abstract idea with, or by use of, a particular machine (not a generic computer, not adding the words "apply it" or words equivalent to "apply the abstract idea", not mere instructions to implement an abstract idea on a computer, adding insignificant extra solution activity to the judicial exception, generally linking the user of the judicial exception to a particular technological environment or field of use), effects a transformation or reduction of a particular article to a different state or thing, or adds meaningful limitations that amount to more than generally linking the use of the abstract idea to a particular technological environment. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
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. The dependent claims fail to recite additional elements that would amount to a practical application or amount to significantly more than the judicial exception as discussed above. The dependent claims further describe the abstract idea.
The rejection is maintained.
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.
Per claims 1, 9, and 17, the claims recite “…wherein the data structure is cryptographically bound to the user device via the one or more cryptographic keys including a device-specific key stored in a secure element of the user device…” The terms “device-specific,” “cryptographically bound,” “bound to” and “bind or binding” are not found in the Specification. The term “data structure” is found in Paragraph 0077 only but it is broad and simply provides a boiler plate definition of what the data structure is and how it is used. Paragraph 0026 states that the secure element can include a hardware specific private key provisioned on the secure element and that could store cryptographic keys. As a result, clear support for the recitation of a “device-specific” key stored in the memory and cryptographically bound to the data structure is not found in the Specification. The Specification was reviewed in full, yet no clear support was found for the above issue. Lastly, it is not known whether the updating of the payment account also means updating the data structure that is bound to the user device. Support for how the payment account is updated is found in Paragraph 0042, but no support is found where the update is based on the updating of the payment account represented by the data structure cryptographically bound to the user device.
All dependent claims are rejected for mere dependency on the rejected claims.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10 and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 10 and 18 recite the limitation "the threshold amount.” There is insufficient antecedent basis for this limitation in the claims.
Amending the claims to recite proper antecedent basis would overcome the 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.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1-20 fall within at least one of the four categories of patent eligible subject matter (process, machine, manufacture, or composition of matter).
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of authorizing a payment amount based on rules and provisioned data and updating balance of a payment account without significantly more.
The abstract idea is categorized under certain methods of organizing human activity, including commercial interactions such as sales activities or behaviors and business relations. The claims are directed to a receiving step of receiving a payment credential request including an amount, transforming a payment credential and a payment account into a data structure, receiving an authorization request, determining merchant category, retrieve a threshold value, authorizing the authorization amount, and updating the balance of the payment account are all aspects that clearly capture business relations and sales activities. The claimed scope along with the Specification, Paragraphs 0050-0051, provide further support for the above abstract idea grouping.
Claim 1, in pertinent part, recites:
A method comprising:
receiving… a payment credential request, wherein the payment credential request comprises a requested amount;
transforming… in response to the payment credential request, a payment credential and a payment account corresponding to the payment credential into a data structure representing the payment credential and the payment account, and provisioning the data structure to a user device based at least in part on one or more cryptographic keys associated with the user device, wherein the payment account is associated with a balance corresponding to the requested amount and wherein the data structure is cryptographically bound to the user device via the one or more cryptographic keys including a device-specific key stored in a secure element of the user device;
receiving… and from a merchant system, an authorization request for a transaction having an authorization amount, wherein the authorization request comprises the data structure representing the payment credential and a merchant identifier of the merchant system;
determining… a merchant category associated with the merchant identifier;
retrieving… a threshold value based on the merchant category; and
authorizing… the authorization amount based on the authorization amount exceeding the requested amount by no more than the threshold value; and
updating… the balance of the payment account represented by the data structure cryptographically bound to the user device based at least in part on the authorization amount and the merchant category, in response to authorizing the authorization amount that exceeds the requested amount.
First, the claims are interpreted under the broadest reasonable interpretation (BRI). As a result, the claims are deemed to be directed to a server and what a server does. The limitations directed to a user device and the secure element storing a device-specific key are not part of the server. They are recited to try and limit the scope of the claims. The scope is deemed to be clearly directed to a server and that the server is able to obtain data from the user’s device. Where the data lies and how it is generated by the device are not considered part of the scope because as explained the scope is directed to the server. The limitations directed to the device are not positively recited; they simply provide more context of where the data comes from. Therefore, such limitations are deemed as non-functional and have no patentable weight. Even if these limitations were given weight, then the analysis outcome of the claims would not change. The device and related components will be introduced as additional elements in order to show that they would not change the outcome of the analysis even if given weight. See additional element below in italic.
The judicial exception is not integrated into a practical application. The claims recite the following additional elements: A server system, a memory, a processor circuit, non-transitory computer-readable medium storing instructions, a merchant system, a user device having a secure element storing a device-specific key, one or more cryptographic keys, and a data structure cryptographically bound to the user device. The user device and related limitations are outside the scope but included just to show that the claimed scope still amounts to an abstract idea without significantly more and that such additional elements fail to transform the abstract idea into a practical application. The additional elements are recited at a high level of generality, wherein the claims merely amount to an abstract idea that is implemented using generic computers, performing generic computer functions such as receiving data, providing or provisioning data, generating data, analyzing data, and outputting a result including updating data. Each of the additional elements / limitations are no more than mere instructions to apply the exception using generic computer components or a generic device. Accordingly, even in combination, the 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 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 amount to merely instructions to apply the exception using generic computer components. The claim limitations do not improve another technology or technical field, improve the functioning of a computer itself, apply the abstract idea with, or by use of, a particular machine (not a generic computer, not adding the words "apply it" or words equivalent to "apply the abstract idea", not mere instructions to implement an abstract idea on a computer, adding insignificant extra solution activity to the judicial exception, generally linking the user of the judicial exception to a particular technological environment or field of use), effects a transformation or reduction of a particular article to a different state or thing, or adds meaningful limitations that amount to more than generally linking the use of the abstract idea to a particular technological environment. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
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. The dependent claims fail to recite additional elements that would amount to a practical application or amount to significantly more than the judicial exception as discussed above. The dependent claims further describe the abstract idea.
The claims are not patent eligible.
Prior Art
U.S. Patent Application Publication 2024/00706029 to Wieker et al. (Wieker), in view of Chinese Application Publication CN 111819555A to Law (Law) fail to teach the claimed scope as a whole. Furthermore, additional references were considered, yet no obvious rejection was deemed plausible based on a clear obvious rational to combine such references. For at least these reasons, the claimed scope currently stands allowable over the prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is listed on for 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 EL MEHDI OUSSIR whose telephone number is (571)270-0191. The examiner can normally be reached M-F 9AM - 5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hadi Armouche can be reached at (571) 270-3618. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EL MEHDI OUSSIR/ Primary Examiner, Art Unit 2409
