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 Non-Final Office Action in response to Applicant’s request for continued examination, filed on March 2, 2026.
Claims 1-20 have been examined in this application.
No information disclosure statements (IDS) has been filed.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 19, 2015 has been entered.
Response to Arguments
Applicant's arguments filed 03/02/2026, pages 9-11, regarding claim rejection sunder 35 U.S.C. 101 have been fully considered but they are not persuasive.
Applicant argues, under Step 2A, Prong I that the claims are “not merely sales/business relations or a pen-and-paper mental process” because the claims “recite computer-centric security and authorization operations that cannot be performed mentally or with pen and paper.” Id. 9. Applicant focuses all claim limitations to argue how the claims fail to be directed to an abstract idea grouping. Primarly, Applicant argues that a human cannot perform the cryptographic operation of binding a data structure to a device specific key that the device stores in a secure element. Also, that a human cannot receive electronically requests including a data structure and merchant data; “these operations are inherently rooted in computer technology.” Finally, Applicant cites Example 41 and how it is similar to the instant claims, wherein the Example is directed to patent eligible subject matter; Id.
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 / include a judicial exception and related groupings of an abstract idea. The claims are determined to be directed to an abstract idea of merely authorizing a transaction based on rules and based on provisioned data 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.
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. The first limitation, claim 1, is directed to receiving a payment credential request including an amount. A human can carry this limitation out using their mind. A human can receive verbally or in writing the request. Once received, per second limitation of claim 1, the human can transform a payment credential and a payment account linked to the payment credential into a data structure and provision the data structure to another person using one or more cryptographic keys associated with the another person, the one or more keys stored in a secure manner by the another person. Here, the another person (claimed as “user device”) is outside of the claimed scope that is directed to the server and what the server does. Having the keys stored in the user device has no patentable weight and amount to non-functional descriptive material. Therefore, a human clearly provision data based on other data and do this in their head or using paper and pen. The third limitation is directed to receiving an authorization request for a transaction including an amount, the data structure representing the payment credential and a merchant ID. Nothing in this limitation is impossible for a human to not do. It just amounts to a user receiving a request and the request has data. Fourth limitation is directed to analyzing this received request/data by determining the associated merchant using the received data including the merchant ID. Again, how can a human not be able to review data in their head or on paper to determine based on an ID whether a merchant category is associated with the ID or not? The first limitation is directed to retrieving a rule, here called a threshold valued based on the merchant category; i.e. spend max $100 in groceries. And finally, per last limitation, authorizing the amount based on the rule. The claims couldn’t be more abstract. The claims include a server to try to limit the scope to some technical field but this claimed server is nothing but an off-the-shelf computer performing basic computer functions such as receiving data, generating data, analyzing data, and outputting a result. There is no technical aspect to the claimed scope that amounts to patent eligible subject matter. Regarding the easier of the two groupings, the claims are clearly directed to business relations and sales activities. The claims are a clear example of such abstract idea grouping and sub-groupings.
Applicant argues that the claims amount to a practical application even if an abstract idea is recited. Applicant argues that the “merchant-category determination and category-based threshold retrieval implement a concrete authorization control reflecting real-world category-dependent behavior,” and the “cryptographic binding the device-specific keys in a secure element describes how the server provisions the data structure” are examples of how the claims amount to a practical application involving the improvement / functioning of a computer or improves another technology or field. Applicant further argues that the claims provide enhanced payment credential security using merchant category threshold authorization; id., 10.
The Examiner disagrees. 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: A server system, a memory, a processor circuit, non-transitory computer-readable medium storing instructions, and a processor. The additional elements are recited at a high level, performing functions that are generic functions carried out by any off-the-shelf computer 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. 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.
Per Example 41, the example recites:
A method for establishing cryptographic communications between a first computer
terminal and a second computer terminal comprising:
receiving a plaintext word signal at the first computer terminal;
transforming the plaintext word signal to one or more message block word signals
MA;
encoding each of the message block word signals MA to produce a ciphertext word
signal CA, whereby CA=MAe (mod n);
where CA is a number representative of an encoded form of message word
MA;
where MA corresponds to a number representative of a message and 0 ≤ MA ≤
n-1;
where n is a composite number of the form n=p*q;
where p and q are prime numbers;
where e is a number relatively prime to (p-1)*(q-1); and
transmitting the ciphertext word signal CA to the second computer terminal over a
communication channel.
The Example determines that the claims are directed to a statutory category and that it amounts to an abstract idea categorized under mathematical formulas/calculations. However, under Prong II, the analysis concludes in the claims amounting to a practical application. Here is the rational “The combination of additional elements in the claim (receiving the plaintext word signal at the first computer terminal, transforming the plaintext word signal to one or message block word signals MA, and transmitting the encoded ciphertext word signal CA to the second computer terminal over a communication channel) integrates the exception into a practical application. In particular, the combination of additional elements use the mathematical formulas and calculations in a specific manner that sufficiently limits the use of the mathematical concepts to the practical application of transmitting the ciphertext word signal to a computer terminal over a communication channel. Thus, the mathematical concepts are integrated into a process that secures private network communications, so that a ciphertext word signal can be transmitted between computers of people who do not know each other or who have not shared a private key between them in advance of the message being transmitted, where the security of the cipher relies on the difficulty of factoring large integers by computers. Thus, the claim is not directed to the recited judicial exception, and the claim is eligible.” Emphasis added.
The claims are no where close to the claimed scope of Example 41. Likewise, the simply 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. Therefore, the association of the instant claims to Example 41 is not possible as the claims are irrelevant to the Example, failing to include any association to the Example or additional elements that would be deemed as amounting to a practical application.
Applicant argues that even if the claims are not patent eligible under Prong II, that the claims amount to significantly more than the abstract idea.
The Examiner respectfully disagrees. 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.
Applicant's arguments, pages 11-15, regarding claim rejection sunder 35 U.S.C. 103 have been fully considered but they are not persuasive. the arguments are moot as they do not apply to the newly relied upon references.
Per threshold argument. Assigning a rule or limit or condition including a threshold spend limit to a token is not only taught by Wieker and Law it is almost inherent based on today’s transaction technology. Threshold limits associated with transaction approvals have long been held prevalent that the claims fail to add anything new to what is already known.
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 merely authorizing a transaction based on rules and based on provisioned data 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. Also, the abstract idea is further characterized under mental processes, including concepts performed in the human mind such as observation, evaluation, judgement, opinion and performing said concepts using pen and paper. 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, and authorize the transaction based on the value and other data. The claims can clearly be carried out by a human mind and using pen and paper. The server servers as a tool to carry out the limitations. Receiving data, transforming or converting data, sending the converted data, receiving the converted data and additional information such as a seller identifier, determining a threshold based on a table or memory, and authorizing a value based on the threshold rule are all limitations that are clearly can be carried out mentally. The limitations as outlined above highlight business relations between the entity transforming the information and providing it to a user to later use in a transaction with a merchant. The relationship between parties to settle a transaction is clearly highlighted by the claims and clearly amounts to the above identified abstract idea grouping and sub-groupings.
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.
First, the claims are interpreted under the broadest reasonable interpretation (BRI). As a result, the claims include limitations directed to a user device, which are outside the scope of the claims and they describe the user device, it’s memory and data store thereon. Such limitations are deemed as non-functional and have no patentable weight.
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, and a processor. 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, analyzing data, and outputting a result. 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.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2024/00706029 to Wieker et al. (Wieker), in view of Chinese Application Publication CN 111819555A to Law (Law).
Per claims 1, 9, and 17, Wieker teaches:
A method comprising: receiving, by a server system, a payment credential request, wherein the payment credential request comprises a requested amount [Abstract, Paragraphs 0021, and 0024-0025, and 0039-0043];
transforming, by the server system 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… (limited use token is generated with appropriate balance and either with a new account or mapped to an account) [Abstract, Paragraphs 0021, 0024-0025, and 0036];
receiving, by the server system 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 (the user device receives the token with the amount information and further token rules including repayment rules) [Paragraphs 0024, 0032, and 0046-0047];
authorizing, by the server system, the authorization amount based on the authorization amount exceeding the requested amount by no more than the threshold value (using the generated and stored token, the transaction is authorized with the specified merchant that is authorized to settle the transaction) [Paragraphs 0026, 0034-0035, and 0045-0051].
Wieker does not explicitly disclose:
Wieker teaches provisioning a data structure usable by a user to settle a transaction, as indicated above; however, Wieker does not explicitly disclose providing the user device with the provisioned data structure […] based at least in part on one or more cryptographic keys associated with the user device […].
Law teaches provisioning a data structure (token) […] based at least in part on one or more cryptographic keys associated with the user device […] (“In some embodiments of the invention, the authorizing entity server 106 may be any computing device configured to determine whether to approve a transaction by a particular user. The authorization entity server 106 may maintain several accounts, with one or more accounts being associated with a particular user. Each account may be associated with a certain amount of a resource (e.g., a balance) upon which authorization for a transaction may be based... In some embodiments, after successfully enrolling the user into the system described herein, the authorizing entity server 106 may generate a token to associate with the user, and may provide the token to the SRT platform 110 to bind to the client device 102 along with a pair of cryptographic keys.
Additionally, once a user has been authenticated, the client device 102 or SRT server 110(a) may be configured to generate a cryptographic key and/or token to be bound (or otherwise associated) with a particular client device 102, which is stored in respective token data 110(B) such that data received from the client device 102 may be verified using the stored public key. Upon receiving an indication that the client device 102 has been authenticated by the authorizing entity server 106, the token and cryptographic key may be bound to the client device 102. The authorization request message may also include additional data elements, such as one or more of a service code, an expiration date, and the like. The authorization request message may also include transaction information, such as any information associated with the current transaction, such as the transaction amount, merchant identifier, merchant location, etc., as well as any other information that may be used to determine whether to identify and/or authorize the transaction. The authorization request message may also include other information, such as information identifying the access device that generated the authorization request message, information regarding the location of the access device, and the like.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Wieker, which teaches generating a token based on a plurality of data and sending the token to a user device for subsequent transactions with a specific merchant and based on conditions/rules such as transaction amount limitations, to include the teachings of Law to explicitly disclose that the token is generated using user device cryptographic keys in motivation of insuring a link between the token and the device, which optimizes security measures. Furthermore, the Examiner notes that authentication of a transaction based on rules or conditions linked to merchant specific rules, transaction amount limitations or thresholds, and so on are taught by both Wieker and Law. Therefore, it is obvious to one of ordinary skill in the art, based on the singular or combined teachings of Wieker in view of Law to utilize any rules/conditions for the provisioned token in order to ensure proper authentication/authorization of a transaction in light of the rules.
Although Wieker teaches provisioning a data structure usable by a user to settle a transaction, as indicated above; however, Wieker does not explicitly disclose… 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. This limitation has no patentable weight as it is outside the scope of the claims directed to the server and what the server does. Likewise, this limitation is concerned with the user device; therefore, it amounts to mere non-functional descriptive material having no patentable weight.
However, in efforts of advancing prosecution by showing that such limitation is obvious, Samuelsson teaches … 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 [Paragraphs 0090, 0110 and 0125 and Figures 4-5].
It would have been obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Wieker, in view of law, which teach generating a token based on a plurality of data and sending the token to a user device for subsequent transactions, wherein the token is based on cryptographic keys associated with a user device, as clearly disclosed above, to include the teachings of Samuelsson to explicitly disclose … 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 in motivation of enhancing security measures by storing the keys at the user device and within said secure element.
Although Wieker teaches generating a token to settle a transaction, wherein the token is based on rules and other elements including specific merchant based token generation, wherein in order to utilize the token the merchant has to be deemed an authorized merchant, see Paragraphs 0034-0035, Wieker does not explicitly disclose determining, by the server system, a merchant category associated with the merchant identifier. Law also discloses authorizing transaction based on a specific merchant identifier associated with a specific merchant; see Law; however, does not explicitly disclose the limitation at issue.
Banerjee teaches determining, by the server system, a merchant category associated with the merchant identifier [Paragraphs 0044, 0079].
It would have been obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Wieker, in view of law, and Samuelsson, to include the teachings of Banerjee to explicitly disclose determining merchant category in motivation of ensuring the token is used for the right merchant category.
Although Wieker teaches retrieving, by the server system, a threshold value based on the merchant identifier, Paragraphs 0026, 0034-0035, and 0049-0051, Wieker does not explicitly disclose retrieving, by the server system, a threshold value based on the merchant category.
Banerjee teaches retrieving, by the server system, a threshold value based on the merchant identifier [Paragraphs 0044].
It would have been obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Wieker, in view of law, and Samuelsson, to include the teachings of Banerjee to explicitly disclose using merchant categories instead of merchant IDs to establish rules related to the generated tokens in motivation of broadening the transaction rules associated with the token used for payment.
Per claims 2, 10, and 18, Wieker teaches updating, by the server system, the balance of the payment account based on the authorization amount when the authorization amount is less than or equal to the requested amount; and when the authorization amount exceeds the requested amount by the threshold value, updating, by the server system, the balance of the payment account based on the authorization amount and based at least in part on the merchant identifier [Paragraphs 0025-0027].
Per claims 3, 11, and 19, Wieker teaches generating, by the server system, a first re-payment schedule based on the requested amount; receiving, by the server system, an indication of payment of the transaction; determining, by the server system, whether the payment was for an amount different than the requested amount based on the balance of the payment account, in response to the indication of payment of the transaction; activating, by the server system, the first re-payment schedule, in response to determining that the payment was for an amount less than or equal to the requested amount; and generating, by the server system, a second re-payment schedule based on the first re- payment schedule and the indication of payment of the transaction, in response to determining that the payment was for an amount greater than the requested amount [Paragraphs 0021-0023, 0047 and 0050].
Per claims 4, 12, and 20, Wieker teaches further comprising, after generating the first re-payment schedule: sending, by the server system and to a re-payment server, a reserve request for a re- payment account, wherein the reserve request comprises a reserve amount based on the requested amount (reserve is understood to mean additional amount available to spend or amount that can be incorporated into the repayment plan, and also use of an open ended account) [Paragraphs 0021-0023, 0026-0027, 0047 and 0050].
Per claims 5, and 13, Wieker teaches in response to completing the second re- payment schedule: sending, by the server system and to the re-payment server, a release request for the re- payment account, wherein the release request comprises a release amount based on the reserve amount (when repayment is made, an account balance is generated/updated) [Paragraphs 0021-0023, 0026-0027, 0047 and 0050].
Per claims 6, and 14, Wieker teaches wherein the first re-payment schedule comprises a plurality of partial re-payments that sum to the requested amount [Paragraphs 0021-0023, 0026-0027, 0047 and 0050].
Per claims 7, and 15, Wieker teaches wherein the second re-payment schedule comprises a plurality of partial re-payments that sum to the amount different than the requested amount [Paragraphs 0021-0023, 0026-0027, 0047 and 0050].
Per claims 8, and 16, Wieker teaches wherein the second re-payment schedule comprises fewer partial re-payments than the first re-payment schedule, in response to determining that the indication of the payment of the transaction is for an amount less than the requested amount (repayment schemes can be made as desired as they amount to a design feature and nothing more) [Paragraphs 0021-0023, 0026-0027, 0047 and 0050].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is listed on for PTO-892.
See PGPUB 2022/0020016 to Scott et al. Scott teaches the majority of what Applicant deems as their invention regarding tokenization and rules on how to authenticate a transaction using generated unique tokens.
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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Sincerely,
/EL MEHDI OUSSIR/Primary Examiner, Art Unit 3699