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 .
Status of Claims
This is in reply to the amended claims filed on 1/2/2026, wherein:
Claims 1-11 are cancelled;
Claims 12-14, 16, 22-24 are amended;
Claims 15, 17-21 and 25 remain as previously presented or original; and
Claims 12-25 are currently pending and have been examined.
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 12-25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite a system, medium, and method for determining whether payment applets require authentication which is considered a judicial exception because it falls under Certain Methods of Organizing Human Activity such as commercial or legal interactions, including sales activities or behaviors. This judicial exception is not integrated into a practical application as discussed below and the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
This rejection follows the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed Reg 4, January 7, 2019, pp. 50-57 (“2019 PEG”)(MPEP 2106).
Analysis
Step 1 (Statutory Categories) – 2019 PEG pg. 53 (See MPEP 2106.03)
Claims 12-25 are directed to the statutory category of a process.
Step 2A, Prong 1 (Do the claims recite an abstract idea?) – 2019 PEG pg. 54 (See MPEP 2106.04(a)-(c))
For independent claims 12, 16, and 22, the claims recite an abstract idea of determining whether payment applets require authentication. The steps of independent claim 12 recite the abstract idea (in bold below) of: A method comprising: detecting, by a device, one or more near field communication (NFC) polling signals transmitted by a wireless payment terminal that comprises an NFC reader; determining, by the device based at least in part on the one or more detected NFC polling signals, whether the wireless payment terminal is associated with a service provider or another service provider; in response to determining that the wireless payment terminal is associated with the service provider, determining that a payment applet associated with the service provider is provisioned on a secure element of the device, the payment applet including an attribute indicating whether the payment applet can be utilized for a wireless transaction associated with the service provider without user authentication; in response to determining that the attribute indicates that the payment applet can be utilized for the wireless transaction associated with the service provider without the user authentication, allowing the payment applet to be utilized for the wireless transaction with the wireless payment terminal associated with the service provider without the user authentication; and in response to determining that the attribute indicates that the payment applet cannot be utilized for the wireless transaction associated with the service provider without the user authentication, requesting the user authentication prior to allowing the payment applet to be utilized for the wireless transaction with the wireless payment terminal associated with the service provider. Independent claims 16 and 22 recite similar steps that recite the abstract idea. Independent claims 12, 16, and 22, as drafted, are a process that, under the broadest reasonable interpretation, covers Certain Methods of Organizing Human Activity, since they recite commercial or legal interactions, including sales activities or behaviors. If the claim limitations, under the broadest reasonable interpretation, covers methods of organizing human activity but for the recitation of additional elements including generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Other than reciting the abstract idea, the independent claims recite additional elements including generic computer components such as “a device, a wireless payment terminal that comprises an NFC reader, a payment applet, a wireless communication controller, a secure element of the device, and a non-transitory machine readable medium comprising instructions executed by one or more processors”, and nothing in the claims precludes the steps from being performed as a method of organizing human activity. Accordingly, the independent claims recite an abstract idea.
Dependent claims 13-15, 17-21, and 23-25 recite similar limitations as independent claims 12, 16, and 22; and when analyzed as a whole are held to be patent ineligible under 35 U.S.C 101 because the additional recited limitations only refine the abstract idea further. Other than reciting the abstract idea, the dependent claims recite similar additional elements including generic computer components as the independent claims, such as “the device, the wireless payment terminal, the secure element, an other payment applet, the wireless communication controller comprises a near field communication controller, the processor, a server, the system, a third payment applet, the second payment applet, the non-transitory machine readable medium”. If a claim limitation, under its broadest reasonable interpretation, covers commercial or legal interactions, but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas.
Step 2A, Prong 2 (Does the claim recite additional elements that integrate the judicial exception into a practical application?) – 2019 PEG pg. 54 (See MPEP 2106.04(d)-(c))
This judicial exception is not integrated into a practical application. In particular, independent claims 12, 16, and 22 only recite the additional elements of “a device, a wireless payment terminal that comprises an NFC reader, a payment applet, a wireless communication controller, a secure element of the device, and a non-transitory machine readable medium comprising instructions executed by one or more processors”. A plain reading of the Figures and associated descriptions in the specification reveals that generic processors may be used to execute the claimed steps. The additional elements are recited at a high level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to no more than mere instructions to apply the exception using generic computer components (See MPEP 2106.05(f)) and limits the judicial exception to a particular environment (See MPEP 2106.05(h)). Mere instructions to apply an exception using a generic computer component and limiting the judicial exception to a particular environment doesn’t integrate the abstract idea into a practical application in Step 2A. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Hence, independent claims 1, 12, and 16 are directed to an abstract idea.
Dependent claims 13-15, 17-21, and 23-25, recite similar additional elements as the independent claims including generic computer components, such as “the device, the wireless payment terminal, the secure element, an other payment applet, the wireless communication controller comprises a near field communication controller, the processor, a server, the system, a third payment applet, the second payment applet, the non-transitory machine readable medium”. The judicial exception is not integrated into a practical application because the additional elements in the dependent claims are also recited at a high-level of generality such that it amounts to more no more than mere instructions to apply the exception using generic computer components. Therefore, the additional elements do not integrate the abstract idea into a practical application because they also do not impose any meaningful limits on practicing the abstract idea. Also, the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement of the functioning of a computer system itself; the claims do not effect a transformation or reduction of a particular article to a different state or thing; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Step 2B (Does the claim recite additional elements that amount to significantly more than the judicial exception?) – 2019 PEG pg. 56 (See MPEP 2106.05)
Independent claims 12, 16, and 22 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 recited additional elements amount to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)) and limits the judicial exception to the particular environment of computers (See MPEP 2106.05(h)). The additional elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the function of the elements when each is taken alone. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept in Step 2B.
In addition, the dependent claims 13-15, 17-21, and 23-25 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 of the dependent claims to perform the claimed limitations, amounts to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)). Similar to the independent claims, mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Also, for the same reasoning as the independent claims, the additional elements of the limitations of the dependent claims, when considered individually and as an ordered combination, together do not offer significantly more than the sum of the functions of the elements when each is taken alone and the dependent claims as a whole, do not amount to significantly more than the abstract idea itself. For these reasons, the dependent claims also are not patent eligible.
Response to Arguments
Applicant’s arguments with respect to the rejection of claims 12-25 under 35 USC 101, and 35 USC 103 have been fully considered by the Examiner. In regards to Applicant’s arguments regarding the rejections of the amended independent claims, the examiner agrees that the prior art fails to disclose the amended independent claim limitations. In regards to the Applicant’s arguments regarding the previous rejection of claims 12-25 pursuant to 35 USC 101, the Examiner respectfully does not find the Applicant’s arguments persuasive, and therefore the rejections of claims 1-21 under 35 USC 101 are maintained.
Applicant argues on pages 8 and 9 of their Remarks that the previous Office Action failed to establish a prima facie rejection of the dependent claims under Step 2B of the 2019 PEG because the office action failed to specifically address the features of the dependent claims and broadly concluded that the additional elements failed to amount to significantly more under Step 2B . Appellant’s argument is unpersuasive. Examiners are directed to point to the claim language that recites the abstract idea when identifying the abstract idea. Here the Examiner in merely showing where the abstract idea is recited in the claims (see MPEP 2106.07(a) “if the claim is directed to an abstract idea, the rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim and explain why it corresponds to a concept that the courts have identified as an abstract idea.”). The Examiner has followed the office’s guidelines, met the office’s burden explaining where the idea is recited in the independent and dependent claim language, and explained which abstract concepts identified by the courts the Appellant’s abstract idea is similar to. The dependent claims recite similar limitations as the independent claims that only further refine the abstract idea. Furthermore, the dependent claims recite similar generic computer components as the independent claims such as “the device, the wireless payment terminal, the secure element, an other payment applet, the wireless communication controller comprises a near field communication controller, the processor, a server, the system, a third payment applet, the second payment applet, the non-transitory machine readable medium”. Under Prong 2 of Step 2A, the limitations of the dependent claims are not integrated into a practical application because: the limitations were recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components; the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement of the functioning of a computer itself; the claims do not effect a transformation or reduction of a particular article to a different state or thing; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment. Under Step 2B, it was indicated that the additional elements of the dependent claims, when taken in combination, together do not offer more than the sum of the functions of the elements when each is taken alone; and the claims as a whole do not amount to significantly more than the abstract idea.
The Applicant argues on pages 9 and 10 of their Remarks that the office action has failed to address or evaluate the combination of the elements of the claims; and the office action fails to establish prima facie support that “the additional elements are recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer elements”; and the office action has therefore failed to establish a prima facie rejection under 35 USC 101 of any of the claims. Examiner respectfully disagrees with Applicants arguments.
As stated in the above final rejection, independent claims 12, 16, and 22 recite generic computer components such as “a device, a wireless payment terminal that comprises an NFC reader, a payment applet, a wireless communication controller, a secure element of the device, and a non-transitory machine readable medium comprising instructions executed by one or more processors”. A plain reading of Figures 1-3, and 9, and associated descriptions in at least para. 0093 of the specification stating “electronic system 900 can be, and/or can be a part of, one or more of the electronic devices 102A-B, one or more of the wireless payment terminals 104A-B, and/or one or more of the servers 110,120 shown in fig. 1….electronic system 900 may include various types of computer readable media and interfaces for various other types of computer readable media…electronic system 900 includes a bus 908, one or more processing unit(s) 912, a system memory 904 (and/or buffer) a ROM 910, a permanent storage device 902, an input interface 914, an output interface 906, and one or more network interfaces…the one or more processing unit(s) 912 can be a single processor or a multi-core processor in different implements”, paras. 0095-0096 of the specification stating “permanent storage device 902 may be a non-volatile memory unit….mass-storage device (such as a magnetic or optical disk and its corresponding disk drive) may be used as the permanent storage device 902…movable storage device (such as a floppy disk, flash drive, and its corresponding disk drive) may be used as the permanent storage device 902”, para. 0098 of the specification stating “electronic system 900 can be a part of a network of computers (such as a LAN, a wide area network (“WAN”), or an Intranet, or a network of networks, such as the internet”, and para. 0103 of the specification stating “while the above discussion primarily refers to microprocessor or multi-core processors that execute software…one or more implementations are performed by one or more integrated circuits, such as ASICs or FPGAs”, reveals that generic processors may be used to execute the claimed steps. The additional elements of “a device comprising at least one processor and a secure element, a wireless payment terminal, and a wireless communications controller” are recited at a high level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to no more than mere instructions to apply the exception using generic computer components. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Under Step 2B of the 2019 PEG, Independent claims 12, 16, and 22 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As further stated in the above final rejection, the recited additional elements amount to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)) and limits the judicial exception to the particular environment of computers (See MPEP 2106.05(h)). The additional elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the function of the elements when each is taken alone. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept in Step 2B.
Applicant further argues on pages 9 and 10 of their Remarks that the claimed combination of additional elements are “significantly more” because they are a practical implementation of the abstract idea and differ from the routine and conventional sequence of events, similar to DDR Holdings and Example 35. Examiner respectfully disagrees with Applicant’s argument because in Example 35, the combination of the steps such as “the ATM providing a random code, the mobile communication device’s generation of the image having encrypted code data in response to the random code, the ATM’s decryption and analysis of the code data, and the subsequent determination of whether the transaction should proceed based on the analysis of the code data” was a non-generic way to ensure that the customer’s identity is verified in a secure manner that is more than the conventional verification process employed by the ATM alone”. The combination of obtaining information from the mobile communications device instead of the ATM keypad, and using the image instead of a PIN to verify a customer’s identity describes a process that differs from the routine and conventional sequence of events normally conducted by ATM verification using a PIN; and the combination of steps set up a sequence of events that addressed unique problems associated with bank cards and ATMs. Unlike claim 35, the Applicant has not supplied any support for their argument that the claimed combination of elements is different from the routine and conventional sequence of events normally conducted when a payment applet is provisioned on a device. Applicant has not stated how their claimed combination of steps is different from the routine and Applicant has also not described how the claimed limitations address a unique problem. The only similarity between the Applicant’s claimed limitations and Example 35 is that they both use well know components such as a processor and a mobile communication device. In regards to the Applicant’s claimed limitations, the claimed invention does not provide an improvement to a computer or other technology under Step 2B of the 2019 PEG. Applicant’s claim limitations do not improve the functioning of a computer, but instead focus on abstract ideas that merely use computers as tools. In the instant application, the Examiner fails to see where the Applicants claims result in a technological improvement because the limitations are directed towards steps performed on a computer, and the functioning of the additional elements or technological processes themselves are not improved as a whole. Claims 12-25 are not patent eligible and the rejection of the claims pursuant to 35 USC 101 is maintained.
Conclusion
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 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 mailing date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Paul Schwarzenberg whose telephone number is (313) 446-6611. The examiner can normally be reached on Monday-Thursday (7:30-6:30).
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/PAUL S SCHWARZENBERG/Primary Examiner, Art Unit 3695 2/24/2026