DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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 the claims
2. Applicant filed the response to Election/Restriction requirement on 06/20/2025. Claims 1 and 18-20 are amended. Applicant elected Species B corresponding to claims 1-18, and claims 19-20 are withdrawn from consideration. Claims 1-20 are pending.
3. However, the elected by Applicant claims 1-18 for the examination do not represent Species B. Elected by Applicant Species B represented by claims 1-11, therefore, examiner elected claims 1-11 for examination and withdraw claims 12-18 from examination.
Information Disclosure Statement
4. The information disclosure statement (IDS) submitted on 08/15/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
Optional Language
5. Optional limitations are generally not given patentable weight. See MPEP 2103(I)(C) (“Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation.”).
6. Claim 1 recites “when the electronic payment transaction amount triggers the secondary confirmation operation …” and “when the user input answering the secondary confirmation challenge incorrectly answers the secondary confirmation challenge…”.
Claim 10 recites “when the predefined number of secondary confirmation challenges is exceeded by the presentation of the prompt…”.
Claim 11 recites “wherein each secondary confirmation challenge presented is different from any previously presented secondary confirmation challenge”
The underlined limitations represent optional language and are not given patentable weight.
Claim Rejections - 35 USC §101
7. 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.
8. Claims 1-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
9. In the instant case, claim 1 is directed to a “method for presenting secondary confirmation challenges for electronic payment transactions”.
10. Claim 1 recites “preventing a transaction when a user fails a secondary confirmation challenge”. Specifically, the claim recites “receiving … user input requesting an … payment transaction and defining an … payment transaction amount; determining, … whether the … payment transaction amount triggers a secondary confirmation operation”, “determining… whether the… payment transaction amount triggers a secondary confirmation operation”, “when the … payment transaction amount triggers the secondary confirmation, presenting… a prompt comprising a secondary confirmation challenge”, “receiving… other user input answering the secondary confirmation challenge”, and “when the user input answering the secondary confirmation challenge incorrectly answers the secondary confirmation challenge, precluding… completion of the electronic payment transaction” Subject matter grouped under “Certain methods of organizing human activity” (e.g., commercial interactions) and an abstract idea in prong one of step 2A (MPEP 2106.04(a)). Additionally, giving claim 1 its broadest reasonable interpretation it the claim recites “determining that a proposed requires secondary confirmation”. In other words, as the claim recites optional language such as “when the … payment transaction amount triggers…presenting… a secondary confirmation challenge”, “receiving… answering the secondary confirmation challenge” and “when the user input answering the secondary confirmation challenge incorrectly answers…”, only the “receiving… user input…” and “determining… whether…” occurs and the claim also recites “determining whether a transaction requires a secondary confirmation challenge” (MPEP 2103 I C). A recitation that is also a form of “organizing human activity” and, therefore, abstract.
11. This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP 2106.04 II), the additional elements of claim 1 such as “a user interface”, “an electronic payment transaction”, “an electronic payment transaction amount”, and “one or more processors operable with the user interface” represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e., automate) the acts of responding to secondary confirmation challenge for payment transaction.
12. When analyzed under step 2B, as the additional elements do no more than represent the use of a computer, or computer technology, as a tool to perform responding to secondary confirmation challenge for payment transaction and/or generally link the abstract idea to a particular technological environment or field of use, they do not improve computer functionality or provide an improvement to another technology or technological field.
13. Hence, claim 1 is not patent eligible.
Dependent claims 2-4, 10, and 11 also do not occur, as they each depend on the optional language “when the electronic payment transaction amount triggers the secondary confirmation operation, presenting… a secondary confirmation challenge”. As a result, these claims are also not patent eligible.
14. Additionally, dependent claim 2 further describes the abstract idea of preventing a transaction when a user fails a secondary confirmation challenge as it recites “wherein the secondary confirmation challenge requests the… payment transaction amount be entered in words”. The additional element “electronic” represents the use of a computer as a tool to perform an abstract idea and does no more than generally link the abstract idea to a particular field of use. And, therefore, does not improve the functioning of a computer, or to any other technology or technical field.
Additionally, dependent claim 3 further describes the abstract idea of preventing a transaction when a user fails a secondary confirmation challenge as it recites, “wherein the secondary confirmation challenge requests the … payment transaction amounts spelled out in words, with one user selectable amount of the plurality of user selectable amounts spells out the … payment transaction in the words and other user selectable amount of the plurality of user selectable amounts spell out transaction amounts other than the … payment transaction amount in the words.” The additional element “electronic” represents the use of a computer as a tool to perform an abstract idea and does no more than generally link the abstract idea to a particular field of use. And, therefore, does not improve the functioning of a computer, or to any other technology or technical field.
Additionally, dependent claim 4 further describes the abstract idea of preventing a transaction when a user fails a secondary confirmation challenge as it recites “wherein the secondary confirmation challenge lists a plurality of selectable math equations, with one user selectable math equation the plurality of user selectable math equations has a sum equal to the… payment transaction amount and other user selectable math equations of the plurality of user selectable math equations have other sums that are different from the… payment transaction amount. The additional element “electronic” represents the use of a computer as a tool to perform an abstract idea and does no more than generally link the abstract idea to a particular field of use. And, therefore, does not improve the functioning of a computer, or to any other technology or technical field.
Dependent claim 5 further describes the abstract idea of preventing a transaction when a user fails a secondary confirmation challenge as it recites “wherein the determining whether the … payment transaction amount triggers a secondary confirmation operation comprises determining whether the … payment transaction amount exceeds a predefined threshold”. The additional element “electronic” represents the use of a computer as a tool to perform an abstract idea and does no more than generally link the abstract idea to a particular field of use. And, therefore, does not improve the functioning of a computer, or to any other technology or technical field.
Dependent claim 6 further describes the abstract idea of preventing a transaction when a user fails a secondary confirmation challenge as it recites “wherein the determining whether the … payment transaction amount triggers a secondary confirmation operation comprises determining whether the … payment transaction amount exceeds an average … payment transaction amount” represents the use of a computer as a tool to perform an abstract idea and does no more than generally link the abstract idea to a particular field of use. And, therefore, does not improve the functioning of a computer, or to any other technology or technical field.
Dependent claim 7 further describes the abstract idea of preventing a transaction when a user fails a secondary confirmation challenge as it recites “wherein the determining whether the … payment transaction amount triggers a secondary confirmation operation comprises determining whether the … payment transaction is requested at a predetermined time of day”. The additional element “electronic” represents the use of a computer as a tool to perform an abstract idea and does no more than generally link the abstract idea to a particular field of use. And, therefore, does not improve the functioning of a computer, or to any other technology or technical field.
Dependent claim 8 further describes the abstract idea of preventing a transaction when a user fails a secondary confirmation challenge as it recites “wherein the determining whether the … payment transaction amount triggers a secondary confirmation operation comprises determining whether the … payment transaction is requested while… is situated in a predefined location”. The additional elements “electronic” and “the electronic device” represent the use of a computer as a tool to perform an abstract idea and does no more than generally link the abstract idea to a particular field of use. And, therefore, does not improve the functioning of a computer, or to any other technology or technical field.
Dependent claim 9 further describes the abstract idea of preventing a transaction when a user fails a secondary confirmation challenge as it recites “wherein the determining whether the … payment transaction amount triggers a secondary confirmation operation comprises determining whether the … payment transaction is directed to a recipient to whom previous … payment transactions have occurred”. The additional element such as “electronic” represents the use of a computer as a tool to perform an abstract idea and does no more than generally link the abstract idea to a particular field of use. And, therefore, does not improve the functioning of a computer, or to any other technology or technical field.
Additionally, dependent claim 10 further describes the abstract idea of preventing a transaction when a user fails a secondary confirmation challenge as it recites: “wherein: the precluding the completion of the … payment transaction occurs when the predefined number of secondary confirmation challenges fails to be exceeded by presentation of the prompt comprising the secondary confirmation challenge; and when the predefined number of secondary conformation challenges is exceeded by presentation of the prompt comprising the secondary confirmation challenge, the method further comprises presenting… another secondary confirmation challenge that is different from the second confirmation challenge”. The additional element “electronic” represents the use of a computer as a tool to perform an abstract idea and does no more than generally link the abstract idea to a particular field of use. And, therefore, does not improve the functioning of a computer, or to any other technology or technical field.
Dependent claim 11, further describes the abstract idea of preventing a transaction when a user fails a secondary confirmation challenge as it recites “wherein each secondary confirmation challenge presented is different from any previously presented secondary confirmation challenge”.
Conclusion
15. The claims as a whole do not amount to significantly more than the abstract idea itself. This is because the claims do not effect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
16. Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
Claim Rejections - 35 USC § 112
17. 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.
18. Claims 1-11 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Lack of antecedent basis
19. Claim 1 recites the limitation “the user input” in paragraph starting with 2nd “when …”. There is insufficient antecedent basis for this limitation in the claim, because “user input requesting an electronic payment transaction…” is not referring to “the user input” in “when … answering the secondary confirmation challenge…”
20. Claims 2-11 are rejected under the same rationale as claim 1 because claims 2-11 inherit the deficiencies of claim 1 due to their dependency.
Claim Rejections - 35 USC § 102
21. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
22. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
23. Claims 1-4, 10, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
US11593773B1 to Yip et al.
24. As per claim 1:
Yip et al. discloses the following limitations:
receiving, at a user interface, user input requesting an electronic payment transaction and defining an electronic payment transaction amount (Fig.8, item 802; col.18, lines 15-19, col/line 18/63-19/1, col.37, lines 11-15)
determining, by one or more processors operable with the user interface, whether the electronic payment transaction amount triggers a secondary confirmation operation (Col.19, lines 58-62, col.35, lines 46-50)
Claim 1 language “when the electronic payment transaction amount triggers the secondary confirmation operation…” is optional and are generally not given patentable weight according to the MPEP (2103 I C). Therefore, subsequent limitations “… presenting, by the one or more processors on the user interface, a prompt comprising a secondary confirmation challenge; receiving, at the user interface, other user input answering the secondary confirmation challenge; and when the user input answering the secondary confirmation challenge incorrectly answers the secondary confirmation challenge, precluding, by the one or more processors, completion of the electronic payment transaction” do not necessarily occur.
25. Claim 2 language “wherein the secondary confirmation challenge requests the electronic payment transaction amount be entered in words” further describes “when the electronic payment transaction amount triggers the secondary confirmation operation” which is optional and not given patentable weight according to the MPEP (2103 I C).
26. Claim 3 language “wherein the secondary confirmation challenge lists a plurality of user selectable amounts …” further describes “when the electronic payment transaction amount triggers the secondary confirmation operation” which is optional and not given patentable weight according to the MPEP (2103 I C).
27. Claim 4 language “wherein the secondary confirmation challenge lists a plurality of user selectable math equations …” further describes “when the electronic payment transaction amount triggers the secondary confirmation operation” which is optional and not given patentable weight according to the MPEP (2103 I C).
28. Claim 10 language “further comprising determining of a predefined number of secondary confirmation challenges has been exceeded by presentation of the prompt comprising the secondary confirmation challenge” further describes “when the electronic payment transaction amount triggers the secondary confirmation operation” which is optional and not given patentable weight according to the MPEP (2103 I C).
29. Claim 11 language “wherein each secondary confirmation challenge presented is different from any previously presented secondary confirmation challenge” further describes “when the electronic payment transaction amount triggers the secondary confirmation operation” which is optional and not given patentable weight according to the MPEP (2103 I C).
30. Claims 1-3 and 5-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
US11593773B1 to Yip et al.
31. As per claim 1:
Yip et al. discloses the following limitations:
receiving, at a user interface, user input requesting an electronic payment transaction and defining an electronic payment transaction amount (Fig.8, item 802; col.18, lines 15-19, col/line 18/63-19/1, col.37, lines 11-15)
determining, by one or more processors operable with the user interface, whether the electronic payment transaction amount triggers a secondary confirmation operation (Col.19, lines 58-62, col.35, lines 46-50)
when the electronic payment transaction amount triggers the secondary confirmation operation (Col.35, lines 46-50), presenting, by the one or more processors on the user interface, a prompt comprising a secondary confirmation challenge (Col.38, lines 26-46)
receiving, at the user interface, other user input answering the secondary confirmation challenge (Col/line 32/65-33/22; 41/60-42/5)
when the user input answering the secondary confirmation challenge incorrectly answers the secondary confirmation challenge, precluding, by the one or more processors, completion of the electronic payment transaction (Col.48, lines 12-14)
32. As per claim 2:
Yip et al. discloses the following limitations:
wherein the secondary confirmation challenge requests the electronic payment transaction amount be entered in words (Col.44, lines 4-19)
33. As per claim 3:
Yip et al. discloses the following limitations:
wherein the secondary confirmation challenge lists a plurality of user selectable amounts spelled out in words, with one user selectable amount of the plurality of user selectable amounts spells out the electronic payment transaction amount in the words and other user selectable amounts of the plurality of user selectable amounts spell out transaction amounts other than the electronic payment transaction amount in the words (Fig.10, items 1008A, 1008B, col.44, lines 4-32; col/line 47/64-48/5)
34. As per claim 5:
Yip et al. discloses the following limitations:
wherein the determining whether the electronic payment transaction amount triggers a secondary confirmation operation comprises determining whether the electronic payment transaction amount exceeds a predefined threshold (Col.44, lines 53-56)
35. As per claim 6:
Yip et al. discloses the following limitations:
wherein the determining whether the electronic payment transaction amount triggers a secondary confirmation operation comprises determining whether the electronic payment transaction amount exceeds an average electronic payment transaction amount (Col.35, lines 46-50)
36. As per claim 7:
Yip et al. discloses the following limitations:
wherein the determining whether the electronic payment transaction amount triggers a secondary confirmation operation comprises determining whether the electronic payment transaction is requested at a predetermined time of day (Col.42, lines 1-4)
37. As per claim 8:
Yip et al. discloses the following limitations:
wherein the determining whether the electronic payment transaction amount triggers a secondary confirmation operation comprises determining whether the electronic payment transaction is requested while the electronic device is situated in a predefined location (Col.38, lines 1-6)
38. As per claim 9:
Yip et al. discloses the following limitations:
wherein the determining whether the electronic payment transaction amount triggers a secondary confirmation operation comprises determining whether the electronic payment transaction is directed to a recipient to whom previous electronic payment transactions have occurred (Col.38, lines 32-46)
39. As per claim 10:
Yip et al. discloses the following limitations:
further comprising determining of a predefined number of secondary confirmation challenges has been exceeded by presentation of the prompt comprising the secondary confirmation challenge (Col.35, lines 26-37), wherein:
the precluding the completion of the electronic payment transaction occurs when the predefined number of secondary confirmation challenges fails to be exceeded by presentation of the prompt comprising the secondary confirmation challenge (Col.35, lines 37-41)
when the predefined number of secondary confirmation challenges is exceeded by the presentation of the prompt comprising the secondary confirmation challenge, the method further comprises presenting, by the one or more processors on the user interface, another secondary confirmation challenge that is different from the secondary confirmation challenge (Col.27, lines 23-32, col.29, lines 6-37)
40. As per claim 11:
Yip et al. discloses the following limitations:
wherein each secondary confirmation challenge presented is different from any previously presented secondary confirmation challenge (Col.48, lines 8-12)
Claim Rejections - 35 USC § 103
41. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
42. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
43. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US11593773B1 to Yip et al. in view of US20130205370A1 to Kalgi et al.
44. As per claim 4:
Yip et al. does not disclose, however, Kalgi et al., as shown, teaches the following limitations:
wherein the secondary confirmation challenge lists a plurality of user selectable math equations, with one user selectable math equation the plurality of user selectable math equations has a sum equal to the electronic payment transaction amount and other user selectable math equations of the plurality of user selectable math equations have other sums that are different from the electronic payment transaction amount ([0040]-[0041], [0045])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a method for method for verifying a user for a request for an online account from a mobile device and a request ID and a human challenge-response test can be generated and sent to the mobile device of Kalgi et al. (‘370, [0008]) with teaching of Yip et al. for customer authentication using challenge query(s) of a payment processing service that have much more data about a customer than a merchant and is in a better position to authenticate the customer (‘773, col/line 1/66-2/9) to generate human challenge-response tests that can be adapted for display on mobile devices that can be an image of a string of characters representing a mathematical equation such as “1+2,” and the solution to this test can be “3,” which is the solution to the mathematical question (‘370, [0045]).
Conclusion
45. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US20130104213A1 – Nandakumar – Discloses a system and method whereby the identity of a person, entity, device or the like attempting to gain access to a secured resource may be securely authenticated includes a means for receiving from a service client.
US20170372316A1 – Ghosh et al. – Discloses a system and method for authenticating a candidate user accessing a host computing device as an authentic user wherein the host computing device is in communication with an authenticating computing device.
US20140137203A1 – Castro et al. – Discloses a user authentication wherein one of a social network and a business network of each user in a plurality of users is accessed and user history data of each user in the plurality of users is monitored in the at least one of the social network and the business network.
US20100114776A1 – Weller et al. – Discloses a system for conducting an online transaction to be authenticated in real-time using a challenge-response application, wherein the challenge-response application can be administered by an issuer or by a third party on-behalf-of an issuer.
46. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANULLA ABDULLAEV whose telephone number is (571)272-4367. The examiner can normally be reached Monday-Friday 9:30AM -4:30PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Calvin L Hewitt II can be reached at 571-272-6709. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANULLA ABDULLAEV/Examiner, Art Unit 3692
/CALVIN L HEWITT II/Supervisory Patent Examiner, Art Unit 3692