DETAILED ACTION
Acknowledgements
The amendment filed 3/27/2026 is acknowledged.
Claims 21-40 are pending.
Claims 21-40 have been examined.
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 Amendment/Arguments
Regarding the rejection of the claims under 35 USC 101, applicant states that the claims are analogous to Example 35 because the claims recite a particular cryptographic mechanism for achieving secure data handling, and the decryption recited in the claims represents a concrete technical implementation that goes beyond the abstract concept of conducting a payment authorization. Applicant states that decryption using asymmetric key pairs is a technical operation that cannot be performed mentally or through human organization. Applicant states that in Example 35, the specific encryption methodology was found to provide a technical improvement, and therefore the use of public/private key cryptography in the claims provides a technical improvement as well. Applicant states that this limitation imposes meaningful limits on claim scope.
Examiner notes, however, that although claim 2 of Example 35 of the subject matter examples includes a step of decrypting the code data from the read image, this was not the reason the claim was found eligible. Rather, the claim recited a combination of steps which involved an automated teller machine first transmitting a random code to a mobile communication device and then reading an image from the mobile communication device that was generated in response to receipt of the random code, before decrypting the code from the image data and determining if the matches the generated code data. This technical interaction between the automated teller machine and the mobile device provided a practical application. However, the present claims only recite steps of receiving an authorization request including the substitute low-value token, decrypting the substitute low-value token using a private key, and then providing an authorization response to the merchant system. The decryption is recited at a high level and only serves to describe the manner in which the electronic transaction process accesses the substitute low-value token. It does not provide any technical improvement to the cryptography or to the transaction processor, but rather only involves performing an abstract calculation or analysis of data to decipher its contents. Therefore, the claims do not provide a practical application or significantly more than the abstract idea.
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 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 21-27 are directed to a method, claims 28-34 are directed to a system comprising a memory and a processor, and claims 35-40 are directed to a non-transitory computer-readable storage medium. Therefore, these claims fall within the four statutory categories of invention.
The claims recite conducting a payment authorization using a low-value token as part of a system of commerce, which is an abstract idea. Specifically, the claims recite “receiving by an . . . transaction processor, an authorization request including the substitute low-value token from a user . . . via a merchant . . . that Is unaware that the substitute low-value token is a substitute token, the substitute low-value token including information generated by the user . . . based on a determination by the user browser of a token service being unavailable and transmitted from the user . . . to the merchant . . .,” “decrypting . . . the substitute low-value token using a private key corresponding to a public key used . . . to encrypt cardholder data within the substitute low-value token,” and “providing, by the . . . transaction processor, an authorization response to the merchant . . ., based on the authorization request including the substitute low-value token and the . . . transaction processor being aware that the substitute low-value token is a substitute token,” 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 (MPEP 2106.04 & 2106.04(a)) because it describes a process for performing a transaction which involves a transaction processor receiving an authorization request from a merchant that includes substitute account information, while the merchant is unaware that the account information is substitute account information, accessing the substitute low-value token using a mathematical calculation, and providing an authorization response to the merchant based on the request, where the transaction processor is aware that the account information is substitute account information, which is a commercial or legal interaction. Additionally, the step of “decrypting . . . the substitute low-value token using a private key corresponding to a public key used . . . to encrypt cardholder data within the substitute low-value token,” describes a type of calculation, and thus falls within the “mathematical concepts” grouping of abstract ideas. Accordingly, the claims recite an abstract idea (See MPEP 2106.04(a)).
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 2106.04(d)), the additional elements of the claims such as an electronic transaction processor comprising a memory configured to store instructions and a processor configured to execute the instructions, a merchant system, a user browser, and a non-transitory computer-readable medium storing instructions, merely use a computer as a tool to perform an abstract idea. Specifically, these additional elements perform the steps or functions of “receiving by an . . . transaction processor, an authorization request including the substitute low-value token from a user . . . via a merchant . . . that Is unaware that the substitute low-value token is a substitute token, the substitute low-value token including information generated by the user . . . based on a determination by the user browser of a token service being unavailable and transmitted from the user . . . to the merchant . . .,” “decrypting . . . the substitute low-value token using a private key corresponding to a public key used . . . to encrypt cardholder data within the substitute low-value token,” and “providing, by the . . . transaction processor, an authorization response to the merchant . . ., based on the authorization request including the substitute low-value token and the . . . transaction processor being aware that the substitute low-value token is a substitute token.” Viewed as a whole, 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)), 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 2106.05), the additional elements of using an electronic transaction processor comprising a memory configured to store instructions and a processor configured to execute the instructions, a merchant system, a user browser, and a non-transitory computer-readable medium storing instructions to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of conducting a payment authorization using a low-value token as part of a system of commerce. As discussed above, taking the claim elements separately, these additional elements perform the steps or functions of “receiving by an . . . transaction processor, an authorization request including the substitute low-value token from a user . . . via a merchant . . . that Is unaware that the substitute low-value token is a substitute token, the substitute low-value token including information generated by the user . . . based on a determination by the user browser of a token service being unavailable and transmitted from the user . . . to the merchant . . .,” “decrypting . . . the substitute low-value token using a private key corresponding to a public key used . . . to encrypt cardholder data within the substitute low-value token,” and “providing, by the . . . transaction processor, an authorization response to the merchant . . ., based on the authorization request including the substitute low-value token and the . . . transaction processor being aware that the substitute low-value token is a substitute token.” 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 conducting a payment authorization using a low-value token as part of a system of commerce. 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 (f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 22-27, 29-34, and 36-40 further describe the abstract idea of conducting a payment authorization using a low-value token as part of a system of commerce. Specifically, claims 22, 25, 27, 29, 32, 34, 36, and 39 describe transmitting software for generating the substitute low-value token. Although these claims recite the use of software content comprising computer-executable instructions executed by the user browser, the functionality performed by the software only involves generating the token, which is part of the abstract idea as it only involves generating account information. The use of software to perform the step does not provide a practical application or significantly more than the abstract idea, because it only involves using a computer as a tool to automate the abstract idea. Claims 23, 30, and 37 describe converting the substitute low-value token to a primary token and transmitting the primary token to the merchant system, which is also directed to the abstract idea as it only involves conversion of the account number from one format to another and transmission of the account number. Claims 24, 26, 31, 33, 38, and 40 describe characteristics of the primary and substitute low-value tokens, but do not require any steps or functions to be performed. 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.
Statement Regarding Prior Art
The present claims are directed to performing a secure electronic transaction using a substitute low-value token, and specifically involve the steps of receiving, by an electronic transaction processor, an authorization request including the substitute low-value token from a user browser via a merchant system that is unaware that the substitute low-value token is a substitute token, the substitute low-value token including information generated by the user browser based on a determination by the user browser of a token service being unavailable and transmitted from the user browser to the merchant system; and providing, by the electronic transaction processor, an authorization response to the merchant system, based on the authorization request including the substitute low-value token and the electronic transaction processor being aware that the substitute low-value token is a substitute token.
The closest prior art of Hurwitz, et al. (US 2012/0023011) (“Hurwitz”) discloses the use of a web-browser plug-in to generate a one-time use card number for a purchase (Hurwitz ¶ 29). Hurwitz further discloses receiving, by an electronic transaction processor, an authorization request including a substitute token, and providing, by the electronic transaction processor, an authorization response, based on the authorization request including the substitute token (Hurwitz ¶¶ 9, 30, 37-38). Zou, et al. (US 9,098,266) (“Zou”) additionally generally discloses a token having been generated based on a service being unavailable (Zou 8:6-14). Further, Cohen (US 2003/0097331) also discloses temporary card numbers that can be issued and generated for web payments through the browser (Cohen ¶ 393).
However, the prior art does not disclose, neither singly nor in combination, the use of a substitute low-value token based on a token service being unavailable in the manner claimed, which involves receiving the authorization request including the substitute low-value token from a user browser via a merchant system, the substitute low-value token including information generated by the user browser based on a determination by the user browser of a token service being unavailable and transmitted from the user browser to the merchant system, and where the merchant system is unaware that the substitute low-value token is a substitute token the electronic while the transaction processor is aware that the substitute low-value token is a substitute token.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohammad A. Nilforoush whose telephone number is (571)270-5298. The examiner can normally be reached Monday-Friday 12pm-7pm.
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/Mohammad A. Nilforoush/Primary Examiner, Art Unit 3697
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