DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 2, 2026 has been entered.
Response to Amendment
The amendment filed on March 2, 2026 has been entered. Applicant has: amended claims 1, 3, 5, 7, 8, 13 and 15; and added claim 20. Claims 1, 3, 5, 7-8, 13, 15 and 18-20 are now pending, have been examined and currently stand rejected.
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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
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, 5, 7-8, 13, 15 and 18-20 are rejected under 35 U.S.C. 101 because the claimed invention recites and is directed to a judicial exception to patentability (i.e., an abstract idea) and does not provide an integration of the recited abstract idea into a practical application nor include an inventive concept that is “significantly more” than the recited abstract idea to which the claim is directed. MPEP §2106.
In determining subject matter eligibility in an Alice rejection under 35 U.S.C. §101, it is first determined at Step 1 whether the claims are directed to one of the four statutory categories of an invention (i.e., a process, a machine, a manufacture, or a composition of matter). MPEP §2106.03. Here, it is determined that claims 1, 3, 5, 7 and 8 are directed to the statutory category of a machine, and claims 13, 15 and 18-20 are directed to the statutory category of a manufacture. Under a Step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more enumerated categories of patent ineligible subject matter that amounts to a judicial exception to patentability. MPEP §2106.04. Independent claim 1 is selected as being representative of the independent claims. Independent claim 1 recites:
A system for use in associating an authentication and an authorization in connection with a network interaction, the system comprising:
a network including at least one computing device, wherein the at least one computing device includes a processor ,which is configured, by executable instructions, to:
receive a plurality of authorization requests, from one or more acquiring computing devices, each authorization request representing a separate network interaction to a payment account and including a transaction amount for the network interaction and an accountholder authentication value (AAV), which is an authentication result indicative of a prior authentication sequence for a user specific to the payment account in connection with one of the network interactions;
increment a count of authorization requests, which is specific to the AAV, based on the authorization request including said AAV;
determine whether the count of authorization requests exceeds a merchant specific number of authorization(s); and
in response to the count of authorization requests exceeding the merchant specific number of authorizations, append a tag to the authorization request, the tag indicative of the merchant specific number of authorizations being exceeded; and
transmit the authorization request to an issuer of the payment account.
Here, the claims are directed to the abstract idea, or combination of abstract ideas, of evaluating parameters associated with a plurality of authorization requests (e.g., evaluating if the number of times a particular AAV seen in received authorization requests exceeds a threshold) and providing a result/indication/status (e.g., a tag indicating a result) based on the evaluated parameters. This concept/abstract idea, which is identified in the bolded sections seen above, falls within the Certain Methods of Organizing Human Activity grouping because it describes a fundamental economic principle or practice (e.g., evaluating authorization request(s) for compliance). This abstract idea could also fall within the Certain Methods of Organizing Human Activity grouping because it also describes a commercial or legal interaction (e.g., evaluating parameters associated with transaction(s)/payment(s), which is a sales activity). The tying of this concept to a particular environment (e.g., a network environment) fails to move the claims beyond a general link of the use of the abstract idea in a particular environment. Accordingly, it is determined that the claims recite an abstract idea since they fall within one or more of the three enumerated categories of patent ineligible subject matter. MPEP §2106.04. Furthermore, the Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F .3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an "abstract idea" for which computers are invoked merely as a tool. See id. at 1335-36. Here, it is clear that the claim(s) focus on an abstract idea, and not on any improvement to technology and/or a technical field. It is further noted that, the performance of the one or more process steps using a generic computer component (e.g., at least one computing device, at least one processor, etc.) does not preclude the claim limitation(s) from being in the certain methods of organizing human activity grouping.
Since it is determined that the claim(s) contain a judicial exception, it must then be determined, under Step 2A, Prong 2, whether the judicial exception is integrated into a practical application of the exception. MPEP §2106.04. In order to make this determination, the additional element(s), or combination of elements, are analyzed to determine if the claim as a whole integrates the recited judicial exception into a practical application of that exception. Here, claim 1 recites the additional elements of a system comprising a network, where the network includes at least one computing device comprising a processor. Claim 13 recites the additional element of at least one processor. The system, network, at least one computing device and at least one processor are all recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception, or a portion thereof, using a generic computer component and/or system. See MPEP 2106.05(f). Examiner finds no indication that the computer component(s) itself/themselves is/are improved, or that there is an improvement to some other technology. Examiner finds no indication in the Specification (See e.g., Specification [0061-0065]), that the operations recited in the independent claims require any specialized computer hardware or other inventive computer components, i.e., a particular machine, invoke any allegedly inventive programming, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible."). They do not transform or reduce a particular article to a different state or thing. They do not apply the abstract idea in a meaningful way beyond merely linking it to a particular technological environment. Therefore, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Looking at the elements as a combination does not add anything more than the elements analyzed individually.
Under the Step 2B analysis, it is determined whether the recited additional elements amount to something “significantly more” than the recited abstract idea to which the claims are directed (i.e., provide an inventive concept). MPEP §2106.05. As discussed above with respect to integration of the abstract idea into a practical application, the additional element(s) of using various computing components (e.g., a computing device, a processor, a network, etc.) to implement the abstract idea amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. That is, simply implementing the abstract idea on a generic computer or merely using a computer as a tool to perform an abstract idea cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Accordingly, taken alone, the additional elements do not amount to significantly more than a judicial exception. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually.
Therefore, independent claims 1 and 13 are rejected under 35 U.S.C. §101 and are not patent eligible. Dependent claims 3, 5, 7-8, 15 and 18-20 when analyzed are held to be patent ineligible under 35 U.S.C. §101 because the additional recited limitation(s) fail to establish that the claim(s) is/are not directed to an abstract idea. Dependent claims 3 and 15 further refine the abstract idea by describing the types of parameters evaluated in the authorization request(s) (e.g., an aggregate amount) and by describing the result provided as a result of the evaluation (i.e., a second tag indicating the result). These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 5 further refines the abstract idea by describing under what conditions (e.g., the count of authorization requests not exceeding the merchant specific number of authorizations) a particular result (i.e., a second tag) is provided to the issuer. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 7-8 and 18-19 further refine the abstract idea by describing the sending and/or receiving of additional messages based on the evaluation of the authorization request(s). These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 20 further refines the abstract idea by describing under what conditions (e.g., in response to at least the count of authorization requests not exceeding the merchant specific number of authorizations) a particular result (i.e., a second tag) is provided to the issuer. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, the dependent claims are also not patent eligible. Accordingly, it is determined that all claims are directed to non-statutory subject matter under 35 U.S.C. 101 and are ineligible.
Novel/Non-obvious Subject Matter
Examiner has performed a thorough search of the prior art based on the claimed subject matter, and is unable to find prior art, that either individually or in reasonable combination with other prior art, discloses, suggests, teaches, or renders obvious the particular combination of steps or elements as currently recited in independent claims 1 and 13.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure is cited in the Notice of References Cited (PTO-892). The additional cited art further establishes the state of the art prior to the effective filling date of Applicant’s claimed invention.
Unnerstall et al. (US 2018/0121913 A1) discloses receiving an authorization request. Unnerstall [0005-0007]; Unnerstall Claim 1; Unnerstall Claim 10. Unnerstall indicates that the transaction data in the authorization request includes at least data associated with the cardholder (e.g., an account identifier such as a payment card number of the payment card used to conduct the payment transaction, or a PAN), the merchant (e.g., a merchant identifier provided during the transaction) involved in the transaction, a merchant category that identifies a type of merchant, a geographic location of the merchant, and a date and a time for the transaction. Unnerstall [0024]. Unnerstall further discloses determining whether the authorization request satisfies at least one parameter (e.g., satisfies at least one geofence rule). Unnerstall [0022]; [0028]; Unnerstall Claim 1. Unnerstall also indicates that a tag can be appended to the authorization request based on one or more detected conditions. Unnerstall [0022]; [0028]; Unnerstall Claim 1; Unnerstall Claim 3. Unnerstall differs from the claimed invention, in part, because Unnerstall does not explicitly disclose incrementing a count of authorization requests, which is specific to the AAV, based on the authorization request including said AAV, and determining whether the count of the authorization requests exceeds a merchant specific number of authorization(s).
Drechsler et al. (US 2021/0344672 A1) discloses the use of a limited use key (LUK) (i.e., an identifier) that is included in an authorization request. Drechsler [0063]. The LUK may be associated with limited use thresholds that may include a time-to-live threshold, which limits the LUK based on a particular time period, a number of use threshold, which limits the amount of times a particular LUK may be used (e.g., used for 1, 2, 5, etc. transactions) and/or limits the LUK based on a cumulative transaction amount (e.g., the LUK is usable until the cumulative transaction total reaches $100). Drechsler [0063]; [0156]; [0212-0214]; [0218]. Drechsler indicates that a transaction will be approved based on the LUK being below the threshold and denied based on the LUK being above the threshold. Drechsler [0213]. Accordingly, Drechsler teaches that it was known in the art to analyze an identifier within an authorization, track totals associated with the identifier (e.g., a number of use total, cumulative transaction totals, etc.), and to approve or disapprove an authentication request based on the tracked totals. Drechsler differs from the claimed invention, in part, because Drechsler does not track the particular identifiers recited in the claimed invention (i.e., an accountholder authentication value (AAV)). Drechsler also differs from the claimed invention because the thresholds disclosed by Drechsler are not tied to a particular merchant.
Modi et al. (US 2018/0082298 A1) discloses utilizing a unique identifier (e.g., a transaction device identifier) to track attributes associated with various transactions. Modi [0025]; [0045]; [0047]; Modi Claim 2. Modi indicates that transactions associated with the unique identifier may be conditionally approved based on a predetermined monetary amount for a predetermined number of merchants and/or a particular merchant. Modi [0025]; [0045]. Accordingly, while Modi discloses setting and monitoring transaction limits based on a particular merchant, Modi does not disclose where the count is specific to the AAV as currently recited in the claimed invention.
Ates (US 2005/0119978 A1) discloses that a merchant may generate a second authorization request for a given transaction, and that the second authorization request may have the same AAV value as the original transaction. Ates [0380]. Ates indicates that merchants should modify the value of a Control Byte when submitting the AAV in subsequent authorizations in order to avoid the subsequent authorization request from being rejected as a possible replay attack. Ates [0384].
Degen et al. (US 2003/0050882 A1) discloses the use a fraud test which, among other things, determines if a given number of authorization requests occur within a given time frame from the same originating phone number. Degen [0035].
Keithley et al. (US 2020/0058062 A1) discloses the use of an authorization response, which would include a three digit authorization response code and a six-digit numerical authorization control code. Keithley indicates that data regarding cancelled or voided orders, as well as add-ons to the original authorization can be processed. For example, an add-on may be made without reauthorizing the original purchase for up to a specified amount or a percentage of the total order. The same merchant order number may be passed. Certain transactions may be re-authorized if the original authorization was obtained greater than 30 days past or if the add-on is greater than 10%. Keithley [0085].
Naumann zu Koenigsbrueck et al. (US 2021/0243198 A1) discloses methods as well as systems that perform fraud checks and/or authentication operations prior to authorization. Results of such pre-authorization access request screenings may be transmitted to an authorization computer for determining whether to grant access to a resource. Naumann [0005].
Awasthi (US 2017/0076288 A1) discloses receiving an authorization request message for a transaction conducted by a user with a merchant. The authorization request message may include a credential on file indicator. The method may further comprise determining that the authorization request message comprise the credential on file indicator, and, in response to the indicator, performing additional processing. [0005-0008].
Mastercard Authentication Guidelines for Europe V1.1 Draft, March 17, 2019, Retrieved from the Internet: https://pages.paymentsolutions.chase.com/rs/984-MQH-261/images/FILE_Mastercard_Authentication_Guidelines_EU_00333.pdf [retrieved on June 13, 2025] describes the Mastercard on-behalf of AAV validation service. Pp. 55-56.
Response to Arguments
Claim Rejections – 35 U.S.C. § 101
Applicant argues that the pending claims recite a technical solution to a technical problem, through leveraging specific data included in the authorization request to extend the usefulness of an authentication to more than the single transaction. Amendment, pp. 7-8. This argument is unpersuasive. The claimed invention is merely tallying/counting information associated with a particular accountholder authentication value (AAV), and conditionally appending a tag to the authorization request based upon the tally/count. Examiner fails to find any improvement to the network or device which implements the abstract idea. Likewise, the claims fail to recite any improvement to the manner the authorization request is approved or denied. Examiner also fails to find any indication that the usefulness of an authentication is extended to more than a single transaction. While the claimed invention receives multiple authorization requests and selectively tags the authorization request based on a set threshold, the claimed invention fails to utilize the tag in any manner. For example, there is no indication that the claimed invention approves or denies an authorization request based on the tag or the information found therein. Likewise, there is no indication that the claimed invention will approve the authorization request simply because it contains the same AAV. Even if the claimed invention did approve multiple authorization requests based on some indicator (e.g., a particular AAV and/or a tag), this is merely a policy decision not an indication of a technical improvement.
Applicant argues that the amendment make clear that the count is based on the AAV, and no longer incremented based on the transaction identifier alone. Amendment, p. 8. Examiner agrees.
Applicant argues that the claims, as amended, are not only concerned with the AAV, but provide for specific tracking of authorization request relying on the specific AAV from the prior authentication sequence, whereby the same is tracked through the limitations of the claims. Amendment, p. 8-9. Examiner acknowledges that various information is tracked and counted based on the AAV (i.e., the same AAV), however these aspects are part of the abstract. Since these claim elements are part of the abstract idea (i.e., they are not additional elements), they cannot integrate the abstract idea into a practical application and/or provide significantly more than the abstract idea. At best, the claim appears to be reciting a new abstract idea, but a claim for a new abstract idea is still an abstract idea.
Applicant argues that the abstract idea is integrated into a practical application and/or recites significantly more than the abstract idea. Amendment, p. 9. In particular, Applicant points to the counting of the AAV, comparing the count to a merchant specific threshold, and the conditional tagging of the authorization request. Examiner respectfully disagrees. Examiner contends that counting, comparing and conditionally tagging are all part of the abstract idea of evaluating parameters associated with a plurality of authorization requests (e.g., evaluating if the number of times a particular AAV seen in the authorization requests exceeds a threshold) and providing a result/indication/status (e.g., a tag/flag indicating a result) based on the evaluated parameters. Since the elements identified by Applicant are part of the abstract idea, they cannot integrate the abstract idea into a practical application and/or provide significantly more than the abstract idea.
Applicant references BASCOM Global Internet v. AT&T Mobility LLC and argues that “the positioning of the computing device, as part of the network in Claim 1 - logically between the acquiring computing device and the issuer- to perform the specific ordered combination of operations, which are customized to the specific merchant, provides a meaningful limitation of the alleged idea.” Amendment, pp. 9-10. Examiner respectfully disagrees. Examiner contends that the claim fails to provide any indication of the positioning of the network, the at least one computing device, or the processor. While the claimed invention receives data from the acquiring devices and sends data to an issuer, there is no indication that the network, computer or processor needs to be located/situated at a particular location on the network. Merely requiring a generic computing device to send and receive data to and from different entities is not an indication of a particular location. Additionally, BASCOM’s specification identified a particular issue with having filtering at each users device. In order to address this issue, BASCOM, among other things, installed a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user. In this instance, Applicant’s disclosure recites no such issue and the claims fail to recite any similar solutions. Accordingly, the issue in BASCOM is not analogous to the disclosed, or claimed, invention.
Applicant argues that the computing device is specifically positioned inline between the acquiring computing device and the issuer, and concludes that this specific detail about the "network" is sufficient to demonstrate the practical application of the pending claims. Amendment, p. 10. Examiner respectfully disagrees. As indicated above, the claim is not describing a position of the computing device. Rather it is merely reciting that it receives data from one entity and sends it to another. This is not an indication of a specialized computer nor is it an indication that the computer is positioned at a particular location critical to the claimed invention.
For the above reasons, and for those set forth in the 35 U.S.C. § 101 rejection seen above, all claims remain rejected under 35 U.S.C. § 101.
Conclusion
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/J.F./Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698
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