DETAILED ACTION
Status of Claims
Claims 4 and 5 have been previously cancelled.
Claims 1, 6-7, 9, 13, and 17-20 have been amended.
Claims 11-12 and 21 have been cancelled.
Claims 1-3, 6-10, and 13-20 are currently pending and have been considered by the examiner.
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
101 Rejection:
Applicant asserts that the newly amended claims are patent eligible under 35 USC 101. The examiner respectfully disagrees based upon the rationale provided in the following 101 rejection.
Prior Art Rejection:
Applicant’s arguments have been considered and have been deemed persuasive by the examiner in view of additional search and consideration. Thus, the previously issued prior art rejection has been rescinded.
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 1-3, 6-10, and 13-20 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 1-3, 6-10, and 13-20 are directed to a system/apparatus Therefore, these claims fall within the four statutory categories of invention.
Claim 1 recites the following:
A system for source independent consistent tokenization, the system comprising:
one or more processors; and
one or more memories having computer-readable instructions stored thereon that, upon execution by the one or more processors, cause the one or more processors to:
receive, from a merchant server, a first authorization request for a first transaction, the first authorization request comprising a first token representing an account of a customer, wherein the token is not a merchant-facing token or a primary account number of the customer;
detokenize the first token to identify the primary account number of the account of the customer associated with the first token;
identify the merchant-facing token based on the detokenized token by searching a mapping database for the merchant-facing token based on the primary account number;
update the mapping database to map the first token to the merchant-facing token wherein the mapping is stored in the mapping database for use in a second transaction involving the first token;
request a first authorization for the first transaction from an issuing host platform based on the first token;
receive, from the issuing host platform, the first authorization for the first transaction; and
transmit, to the merchant server, a first indication of the first authorization for the first transaction comprising the merchant-facing token.
receive, from the merchant server, a second authorization request for a second transaction, the second authorization request comprising the first token;
identify the merchant-facing token by searching the mapping database for the merchant-facing token based on the first token;
request a second authorization for the second transaction from the issuing host platform based on the first token;
receive, from the issuing host platform, the second authorization for the second transaction; and
transmit, to the merchant server, a second indication of the second authorization for the second transaction comprising the merchant-facing token.
Regarding Step 2A Prong One, the claims recite the abstract idea of risk mitigation. Specifically, the claims recite the limitations underlined above which recite the process of mitigating risk in an economic 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 § 2106.04) because the claims involve the process of mitigating risk in an economic transaction. Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)).
Regarding Step 2A Prong Two, the recited abstract idea 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 element(s) of the claim(s) such as a “processor” and “memories” merely use(s) a computer as a tool to perform an abstract idea. Specifically, the “processor” and “memories” perform(s) the steps or functions underlined above. 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 claim(s) 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 element(s) of a “processor” and “memories” amounts to no more than using a computer or processor to automate and/or implement the abstract idea. As discussed above, taking the claim elements separately, the “processor” and “memories” perform(s) the steps or functions underlined above. 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 risk mitigation. 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 2-3, 6-8, 10, 13-18, and 20 further describe the recited abstract idea. 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. Specifically:
Claims 2-3 and 18 merely further describe the steps directed towards the recited abstract idea.
Claims 6-8, 10, 13-14, 16, and 20 recite additional limitations which are also directed towards the recited abstract idea of risk mitigation or are directed to steps required to perform the recited abstract idea using a computer.
Claims 15 and 17 merely further describes the data that is collected when performing the recited abstract idea of risk mitigation.
Therefore, as the dependent claims do not include additional elements that integrate the abstract idea into a practical application nor provide significantly more than the abstract idea, 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS K PHAN whose telephone number is (571)272-6748. The examiner can normally be reached M-F 1 pm-9 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel can be reached on 571-270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS K PHAN/Examiner, Art Unit 3699
/COURTNEY P JONES/Primary Examiner, Art Unit 3699
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