DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Receipt of Applicant’s amendments filed on January 14, 2026 is acknowledged.
Response to Amendment
Applicant amended claims 1-16.
Applicant cancelled claims 17-19 and 21.
Applicant previously cancelled claim 20.
Claims 1-19 and 21 are pending and have been examined.
Response to Arguments
Applicant's arguments filed January 14, 2026 have been fully considered but they are not persuasive.
Regarding 112 Rejections
Examiner initially rejected claims 1-19 and 21 under 35 USC 112(a) / 1st paragraph as failing to comply with the written description requirement. Applicant has amended the claims making this rejection moot. In view of the amended claims, Examiner withdraws this rejection.
Examiner initially rejected claims 1-19 and 21 under 35 USC 112(b) / 2nd paragraph as being indefinite. Applicant has amended the claims making this rejection moot. In view of the amended claims, Examiner withdraws this rejection.
Regarding 101 Rejections
Examiner initially rejected claims 1-19 and 21 under 35 USC 101 as being directed to non-statutory subject matter.
Applicant argued that the claims have been oversimplified. Examiner does not find this argument persuasive. Merely because Applicant has a different way to describe their claims does not mean that Examiner’s interpretation is incorrect.. The identified steps (“processing” through “transmitting” steps) are the abstract idea. Merely because this identified abstract idea can be summarized does not make the summary the basis of the rejection. The identified steps are the abstract idea at issue in the rejection, which takes into account whether there is anything that qualifies as a practical application. Applicant merely restates the utility of the claims and argues that because there is utility there is a practical application.
Applicant argued that the claims do not recite a mental process, and at most an abstract idea is involved. Examiner does not find this argument persuasive. A mental process is not the basis for Examiner’s rejection. The basis is the claims recite Certain Methods of Organizing Human Activity. Applicant’s claims do recite an abstract idea, identified in the rejection. The limitations reflect a fundamental economic practice due to risk mitigation and also recite commercial activity.
Applicant argued that the claims a recite a practical application of the judicial exception. Applicant argued the claims present a technical improvement. Examiner does not find this argument persuasive. Applicant’s claims do not improve technology; the underlying technology remains unaffected by the claims. Applicant is addressing a business problem (verifying a user/processing a transaction) with a business solution. Applicant is merely using existing technology (for its intended purpose) to implement the business solution. Any improvements lie in the abstract idea itself, not in underlying technology. It is not a technical solution to have the identifiers used for identification be subject to cryptography. The identified limitations do no amount to a practical application because they are a part of the abstract idea. Outside of the abstract idea there remains only the computer implementation of the abstract idea and extra-solution activity. Neither of these are indicative of a practical application. Applicant’s claims do not address a technical limitation/deficiency in the art and thus does not amount to a practical application. Applicant’s claims are unlike those in Enfish and McRO because they are not improving the underlying technology such as a new form of memory.
Applicant argued its claims are similar to those in Ex Parte Desjardins. Examiner does not find this argument persuasive. In those cases claims were found to be eligible because in those cases recited technical improvement to machine-learning systems themselves. For example in Desjardins the specification identified improvements as to how the machine learning model itself operates, including training a machine learning model to learn new tasks while protecting knowledge about previous tasks to overcome the problem of “catastrophic forgetting” encountered in continual learning systems. In Applicant’s claims there is no similar improvement to how the machine learning/AI model functions. Applicant merely notes the utility of the claims which in and of itself is not a technical improvement.
Examiner maintains this rejection.
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.
Claim 4 is 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 4, there is no written support for the limitation “a secure TLS channel”
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 1-16 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 pre-AIA the applicant regards as the invention.
Regarding claim 1, this claim is indefinite for the following reason:
Claim 1 recites the limitation "the PIN" in the second line of the second page of the claim (the transmitting step). There is insufficient antecedent basis for this limitation in the claim. Applicant uses the abbreviation PIN without defining what this stands for Additionally, Applicant has deleted limitations that establish that PIN stand for personal identification number. Appropriate correction is required.
Regarding claim 4, Applicant uses the abbreviation TLS without defining what this stands for. Appropriate correction is required.
Claims 2-16 are rejected due to their dependence on claim 1.
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 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite the abstract idea which may be summarized as verifying a user/device for a transaction.
Step 1 Analysis
Applicants claims are directed to a process (claims 1-16).
Step 2A, Prong 1 Analysis
Claims 1 recites the abstract idea/limitations of:
processing customer-initiated payment transactions,
receiving a payment card;
receiving input data;
synchronizing the payment card such that the payment card can only be associated with at most one [entity] at a time,
generating a unique identifier derived from a second unique identifier associated with a first user and a third unique identifier of the payment card,
wherein the second unique identifier is an International Mobile Equipment Identity (MIEI),
and the third unique identifier is a unique identifier of the payment card;
transmitting the unique identifier
and recording the unique identifier and the PIN in a first user record;
generating a requesting unique identifier from a unique identifier of a requesting entity and a unique identifier of a requesting card purporting to be the payment card,
wherein the unique identifier of the requesting entity is an International Mobile Equipment Identity (MIEI)
receiving a first message to authorize a first request,
wherein the first message includes (i) a plurality of the first request comprising a merchant location, (ii) a requesting unique identifier derived from a requesting card purporting to be the payment card and the requesting entity purporting to be the second entity and a code that is purporting to be the PIN and wherein the code is input;
and recording the first request;
verifying whether to authorize the first request by querying to determine if the requesting unique identifier and the corde entered corresponds with the unique identifier and the PIN and a stored synchronized state indicated association of the payment card with the second entity;
and generating a unique approval identifier as a factor of authentication using at least one of (i) a time-based algorithm or (ii) a one-time code delivered to the second entity;
transmitting a unique approval identifier if the first request is approved,
wherein the third entity does not receive a first user data associated, the first user data indicative of data associated with the payment card and an account of the first user,
and wherein completion of the payment transaction is contingent upon validation of the unique approval identifier.
As drafted these limitations are a process that falls within the “Certain Methods of Organizing Human Activity grouping of abstract ideas; but for the recitation of generic computer components. If a claim limitation, under its broadest reasonable interpretation, recites performance of the limitation as a fundamental economic practice (as risk mitigation) and commercial/legal interactions, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. By reciting/claiming a certain method of organizing human activity, Applicant’s claims recite an abstract idea.
Step 2A, Prong 2 Analysis
This judicial exception is not integrated into a practical application because the claims only recites system components for implementing the abstract idea and extra-solution activity. The claims recite the additional limitations of processors, computing devices, a connected database, a record-keeping system, a unique identifier infrastructure, an encoder terminal, an encoding device, an input device, a second computing device, an interface; and they are recited at a high level of generality. These system components amount to no more than mere instructions to apply the exception using a generic computer. These limitations generally link the use of the judicial exception to a technological environment and are not indicative of integration into a practical application. The limitations of:
receiving a payment card;
receiving input data;
transmitting the unique identifier
and recording the unique identifier and the PIN in a first user record;
receiving a first message to authorize a first request,
and recording the first request;
transmitting a unique approval identifier if the first request is approved,
as drafted are insignificant extra-solution activity. These steps are mere data gathering and storing of information and do not qualify as a practical application of the judicial exception. See MPEP 2106.05(g). These additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claims as a whole do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea without a practical application.
Step 2B Analysis
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of processors, computing devices, a connected database, a record-keeping system, a unique identifier infrastructure; amount to no more than mere components to implement the judicial exception using a generic computer components. For the same reason these elements are not sufficient to provide an inventive concept. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The limitations of:
receiving a payment card;
receiving input data;
transmitting the unique identifier
and recording the unique identifier and the PIN in a first user record;
receiving a first message to authorize a first request,
and recording the first request;
transmitting a unique approval identifier if the first request is approved,
as drafted are insignificant extra-solution activity. These steps are mere data gathering and storing and do not qualify as significantly more than the judicial exception as they are well-understood, routine, and conventional activity when clamed in a merely generic manner (as it is here). See MPEP 2106.05(g). See Applicant’s specification paragraphs [0032-0034], [0066], [0100-0106], about implementation of the abstract idea using general purpose or special purpose computing devices; and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Thus Applicant’s claims are not patent eligible.
Dependent Claims Analysis
As for dependent claims 3, 5, 7-9, 11, and 13-16 these claims recite limitations that further define the same abstract idea noted in independent claim 1. Therefore, claims 3, 5, 7-9, 11, and 13-16 are considered ineligible subject matter for the reasons given above.
As for dependent claims 2, 4, 6, 10, and 12 these claims recite limitations that further define the same abstract idea noted in independent claim 1. In addition, the recite the additional elements of
receiving a plurality of first user data;
storing the first user record;
transmitting the unique approval identifier;
receiving a plurality of second user data;
storing the second user record;
recording the first request;
transmitting a the unique approval identifier;
This is considered insignificant extra-solution activity, because as drafted the limitations are mere data gathering and storing of information. These limitations do not qualify as a practical application of the judicial exception or significantly more. See MPEP 2106.05(g). Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. Therefore, claims 2, 4, 6, 10, and 12 are considered ineligible subject matter.
Thus, the dependent claims 2-16 are not patent-eligible either.
Examiner Request
The Applicant is requested to indicate where in the specification there is support for amendments to claims should Applicant amend. The purpose of this is to reduce potential 35 USC 112(a) or 35 USC 112 first paragraph issues that can arise when claims are amended without support in the specification. The Examiner thanks the Applicant in advance.
Prior Art
Applicant amended the claims and argued that the cited art does not teach the newly amended claims. Examiner has conducted an updated prior art search in view of the new claims and will not provide an art rejection at this time.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J WARDEN whose telephone number is (571)272-9602. The examiner can normally be reached M-F; 9-6 CDT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett M Sigmond can be reached at 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL J. WARDEN/
Examiner
Art Unit 3694
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694