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;
Claims 26-31 are new; and
Claims 12-31 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 12-31 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 12-31 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, a service provider associated with the wireless payment terminal based at least in part on detection of at least one specific NFC technology type present in the one or more detected NFC polling signals and at least one specific data content value carried by the one or more detected NFC polling signals; 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 set to a first value indicating that the payment applet is utilizable for a wireless transaction associated with the service provider without user authentication, or a second value indicating that the user authentication is required; in response to determining that the attribute is set to the first value, utilizing, by an NFC controller of the device, the payment applet provisioned on the secure element for the wireless transaction with the wireless payment terminal during an active NFC polling cycle of the wireless payment terminal, without facilitation of a host processor of the device and without the user authentication; and in response to determining that the attribute is set to the second value, requesting the user authentication prior to utilizing the payment applet for the wireless transaction with the wireless payment terminal. 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 23-31 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, the NFC reader”. 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 23-31, 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 NFC reader”. 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 23-31 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 12-31 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 12-31 pursuant to 35 USC 101, the Examiner respectfully does not find the Applicant’s arguments persuasive, and therefore the rejections of claims 21-31 under 35 USC 101 are maintained.
The Applicant argues on pages 11 and 12 of their Remarks that under Prong 1 of Step 2A, that the claims are not directed to an abstract idea of “determining whether payment applets require authentication” that fall under Certain Methods of Organizing Human Activity such as commercial or legal interactions because the claims are directed to a technical signal analysis operation rooted in NFC communication technology that is not reasonably characterized as merely commercial activity because detecting specific NFC technology types and specific data content values to identify a service provider is a technical operation that cannot reasonably be characterized as organizing human activity. Applicant further states that the claimed limitations impose a specific hardware architecture constraint for the NFC controller operating independently of the host processor during the transaction. Applicants arguments are unpersuasive. Under Step 1, the independent claims are directed to the statutory category of a process; and under Prong 1 of Step 2A, the recited abstract idea of determining whether payment applets require authentication, covers Certain Method of Organizing Human Activity such as commercial or legal interactions including sales activities or behaviors. Under the broadest reasonable interpretation, the steps of amended independent claim 12 for: “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, a service provider associated with the wireless payment terminal based at least in part on detection of at least one specific NFC technology type present in the one or more detected NFC polling signals and at least one specific data content value carried by the one or more detected NFC polling signals; 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 set to a first value indicating that the payment applet is utilizable for a wireless transaction associated with the service provider without user authentication, or a second value indicating that the user authentication is required; in response to determining that the attribute is set to the first value, utilizing, by an NFC controller of the device, the payment applet provisioned on the secure element for the wireless transaction with the wireless payment terminal during an active NFC polling cycle of the wireless payment terminal, without facilitation of a host processor of the device and without the user authentication; and in response to determining that the attribute is set to the second value, requesting the user authentication prior to utilizing the payment applet for the wireless transaction with the wireless payment terminal”, when considered collectively as an ordered combination, is a process that covers Certain Methods of Organizing Human Activity such as commercial or legal interactions. Determining whether to utilize a payment applet for a wireless payment are commercial or legal interactions including sales activities or behaviors. Hence all the steps of the claim, considered collectively as an ordered combination, fall under the abstract idea of Certain Methods of Organizing Human Activity. 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. If the claim limitations, under the broadest reasonable interpretation, cover 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.
The Applicant argues on pages 13 and 14 of their Remarks that under Step 2A of Prong 2, that the claimed limitations are eligible because they recite a specific technological improvement to NFC transaction processing that integrates any alleged abstract idea into a practical application. The Applicant further states that the claims provide a technical solution to the technical problem of authenticating prior to utilizing payment applets which causes delays in completing wireless payment transactions by the wireless transit payment terminal within the NFC polling cycle. Applicant states that the claims provide the technical solution by providing a specific technical improvement to NFC transaction processing by enabling transactions to be completed within the NFC controller and secure element hardware path and bypassing the host processer by detecting specific NFC technology types and data content values to identify the service provider and confirming that the secure element of the device authorizes utilization without host processor facilitation.
Appellant’s arguments are not persuasive. Under Step 2A, of Prong 2, the judicial exception is not integrated into a practical application because 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” 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 that do not impose any meaningful limits on practicing the abstract idea. There is no improvement to NFC transaction processing, the electronic device, the functioning of a computer or any other technology or technical field. Using an electronic device to: detect an NFC polling signal transmitted by a wireless payment terminal, determine a service provider associated with the wireless payment terminal, determine if a payment applet associated with the service provider is provisioned on a secure element of the device set to a first value authorizing payments without authentication, and completing the payment utilizing the NFC controller of the device without facilitation of the host processor of the device and without user authentication, is nothing more than executing instructions to apply the exception to a computer which is using a computer as a tool to perform an abstract idea. The additional elements are recited at a high level of generality such that it 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 a particular environment (See MPEP 2106.05(h)). Speed or efficiency increases from a generic computer is not enough to make a claim eligible (See Credit Acceptance, 859 F.3d at 1056-57 (using computers to perform routine tasks more quickly or more accurately is insufficient to make a claim patent eligible)(citations omitted); buySAFE, inc. v. Google, Inc., 765 F.3d 1250, 1354 (Fed. Cir. 2014) (using a computer to create electronic records, track multiple transactions, and automatically issues instructions is a form of “electronic record keeping” and using a computer to obtain data, adjust account balances, and automatically issue instructions does not improve the functioning of the computer itself); see also Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (Claiming the improved speed or efficiency inherent with applying the abstract idea on a computer is insufficient to render the claims patent eligible.” (Citation omitted))). Merely implementing an abstract idea on a computer in order to increase the efficiency or speed of the abstract idea itself is not indicative of a technical solution to a technical problem (see MPEP 2106.05(a)). Applicant’s claimed limitations only improves the business process of performing payments and do not provide for an improvement in technology. The claimed device, payment applet, and wireless payment terminal still operate according to their known and standard capabilities and using the claimed additional elements to perform a payment transaction without requiring authentication is an improvement to a business process and not an improvement in technology. Therefore the claimed limitations do not meet the criteria or considerations as indicative of integration into a practical application.
The Applicant argues on pages 14 and 15 of their Remarks that under Prong 2, Step 2B that the ordered combination of NFC protocol-level terminal identification, secure element attribute evaluation, and NFC-controller transaction execution during an active polling cycle without host-processor facilitation constitutes a non-conventional technical arrangement that amounts to significantly more than a generic computer implementation. Applicant further states that the specific claimed combination is not a routine or conventional sequence of events and the ordered combination provides a technical solution to the technical problem of latency in high-throughput NFC transaction environments such as transit systems. Applicant further argues that the claims do not merely invoke generic processors performing conventional steps when a particular attribute is set and instead enable real-time transaction completion within protocol timing constraints of NFC communication with a specific arrangement of components and operations that that constitutes significantly more. Applicant further states on page 15 of their Remarks that the dependent claims further demonstrate technical specificity of the invention for detecting NFC polling signals that similarly. Applicant also argues that the amended claims recite patent eligible subject matter consistent with Enfish, DDR, and the 2019 patent eligibility guidelines.
Examiner respectfully disagrees with Applicant’s arguments. Independent claims 12, 16, and 22 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”. 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”, para. 0036 of the specification stating “The electronic device 102A may include a host processor 202, a memory 204, an NFC controller 206, and a secure element 208”, para. 0046 of the specification stating “NFC controller 206 may include one or more antennas and one or more transceivers for transmitting/receiving NFC communications. The NFC controller 206 may further include one or more interfaces, such as a single wire protocol interface, for coupling to the host processor 202 and/or the secure element 208”, para. 0054 of the specification stating “one or more of the host processor 202, the memory 204, the NFC controller 206, the secure element 208, and/or one or more portions thereof, may be implemented in software (e.g., subroutines and code), hardware (e.g., an Application Specific Integrated Circuit (ASIC), a Field Programmable Gate Array (FPGA), a Programmable Logic Device (PLD), a controller, a state machine, gated logic, discrete hardware components, or any other suitable devices) and/or a combination of both”, 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, 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” 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. Under Step 2B, Independent claims 12, 16, and 22 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As stated previously, 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’s claimed limitations are also not indicative of an inventive concept because they are well-understood, routine, and conventional activity and do not constitute a non-conventional technical arrangement. MPEP 2106.05(d)(ii) provides that receiving and transmitting data over a network are well-understood routine and conventional (see BuySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network)), similar to the independent claim which recites: “detecting…polling signals transmitted…, and requesting the user authentication…”. Furthermore, MPEP 2106.05(d)(ii) provides that performing repetitive calculations ((see Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values), and Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims”))), are well-understood, routine, conventional activity, similar to the claimed limitations of the independent claims for: “determining…a service provider associated with the wireless payment terminal…, ...determining that a payment applet associated with the service provider is provisioned on a secure element of the device, and …utilizing, by an NFC controller of the device, the payment applet provisioned on the secure element for the wireless transaction…without facilitation of a host processor of the device and without the user authentication”. MPEP 2106.05(d)(ii) provides that electronic recordkeeping ((Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log))), and storing and retrieving information in memory ((see Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93)) are well-understood, routine, conventional activity, similar to the claimed limitations of the independent claims for: “a payment applet…provisioned on a secure element of the device, the payment applet including an attribute set to a first value…or a second value…”. Applicant’s further argument that the amended claims recite patent eligible subject matter consistent with DDR, Enfish, and the USPTO’s 2019 Patent Eligibility Guidance is also unpersuasive. As previously stated in prior office actions, unlike DDR and Example 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. 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. Unlike DDR, the Applicant’s claims here do not address problems unique to the Internet or require an arguably inventive device or technique for displaying information. The claims in Enfish were held patent eligible because the claims recited specific data structure which improved the way computers store and retrieve data from memory. In regards to the Applicant’s claimed limitations, the claims do not improve the functioning of a computer like in Enfish, but instead focus on abstract ideas that merely use the computers as tools. In the instant application the claims do not have an inventive concept found in the non-conventional and non-generic arrangement of the additional elements; and the claims do not provide an improvement to a particular technology. As previously discussed, the additional elements amount to no more than mere instructions to apply the exception using a generic computer component. Claims 12-31 are not patent eligible and the rejections of the claims pursuant to 35 USC 101 are maintained.
Conclusion
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/PAUL S SCHWARZENBERG/Primary Examiner, Art Unit 3695 7/10/2026
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