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 Request for Continued Examination on 04/30/2026. Claims 1-9 and 11-19 are pending. Claims 1, 9, 11, and 19 are amended. Claims 10 and 20 are canceled.
Claim Objections
3. Claims 1 and 11 are objected to because of the following informalities:
Claims recite “EMV” which is abbreviation.
The first occurrence of all acronyms or abbreviations should be written out for clarity, whether or not they may be considered well known. For example, the first occurrence of “EMV” in the claims should be written out “EMV” (Europay/Mastercard/Visa).
Appropriate corrections are required.
Claim Interpretation
Intended Use
4. Intended use language is generally not given patentable weight. See MPEP 2114(II) ("A claim containing a 'recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus’ if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).”); see also MPEP 2103(C). Examples of claim limitations that are often found to precede intended use include “adapted to,” “capable of,” “sufficient to,” “whereby,” and “for.”
5. Claims 1 and 11 recite “interfacing … to establish a communication path…”.
Claim 16 recites “wherein interfacing … the reader device to enable contacts of the chip to engage …”.
Claim Rejections - 35 USC §101
6. 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.
7. Claims 1-9 and 11-19 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.
8. In the instant case, claims 1 and 11 are directed to a “payment reader and method for replenishing tokens in a payment device”.
9. Claim 11 recites “implementing a payment transaction”. Specifically, claim recites “interfacing … during a payment transaction to establish a communication path …; obtaining a first token stored …; providing … the first token …; receiving… a script and a second token … wherein the script includes at least one instruction … to store the second token … and wherein the script and the second token are received … in response … determining that the first token is not valid for a subsequent payment transaction; communicating … the script and the second token received … via the communication path … established during the payment transaction …; and executing … the script communicated … in accordance with EMV instructions, to store the second token … the second token replacing the first token … for the subsequent payment transaction”. Subject matter grouped under “Certain methods of organizing human activity” (e.g., commercial or legal interactions) and an abstract idea in prong one of step 2A (MPEP 2106.04(a)).
10. 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 11 such as “a payment device”, “a reader device”, “a token storage of the payment device”, “a server”, and “a processing unit of the payment device” do no more than represent the use of a computer as a tool to perform an abstract idea and/or generally linking the use of a judicial exception to a particular technological environment or field of use. Therefore, as they do no more than represent the use of a computer as a tool to perform an abstract idea and/or generally linking the use of a judicial exception to a particular technological environment or field of use, they do not improve computer functionality nor improve another technology or technical field. With respect to “obtaining a first token stored in a token storage of the payment device”, “providing, by the reader device, the first token from the payment device to a server”, and “receiving, by the reader device, a script and a second token for the payment device from the server, wherein the script includes at least one instruction for a processing unit of the payment device to store the second token in the token storage of the payment devices and wherein the script and the second token are received from the server in response to the server determining that the first token is not valid for a subsequent payment transaction”, is simply transmitting data; “[use] of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) (e.g., a fundamental economic practice) does not integrate a judicial exception into a practical application or provide significantly more”, (MPEP 2106.05(f)(2)).
11. When analyzed under step 2B (MPEP 2106.04 II), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describe the concept of implementing a payment transaction using computer technology (e.g., the processor). Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
12. Hence, claim 11 is not patent eligible.
13. Claim 1 also recites “implementing a payment transaction”. Subject matter grouped under “Certain methods of organizing human activity” (e.g., commercial or legal interactions) and an abstract idea in prong one of step 2A (MPEP 2106.04(a)).
14. As in the case of claim 11, the 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 payment reader”, “a payment device”, “reader circuitry”, “a token storage”, “communication circuitry”, “a server”, and “a processing unit of the payment device” 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. With respect to “obtaining a first token stored in a token storage of the payment device”, “providing the first token from the payment device to the server”, and “receiving a script and a second token for the payment device from the server, wherein the script includes at least one instruction for a processing unit of the payment device to store the second token in the token storage of the payment device, wherein the script and the second token are received from the server in response to the server determining that the first token is not valid for a subsequent payment transaction”, is simply transmitting data; “[use] of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) (e.g., a fundamental economic practice) does not integrate a judicial exception into a practical application or provide significantly more”, (MPEP 2106.05(f)(2)). 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 implementing a payment transaction.
15. When analyzed under step 2B (MPEP 2106.04 II), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describe the concept of implementing a payment transaction using computer technology (e.g., the processor). Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
16. Hence, claim 1 is not patent eligible.
17. The following dependent claims recent additional elements not addressed above:
claim 2 recites “a contactless interface having at least one antenna”;
claim 5 recites “a contact interface having a power and communication circuitry”;
claim 6 recites “a slot to receive the payment device” and “a chip of the payment device”;
claims 8 and 18 recite “a cryptographic processing unit”;
claim 12 recites “a near field communication (NFC) device” and “a contactless interface having at least one antenna”;
claim 15 recites “a payment card comprising a chip” and “a contact interface having a power and communication circuitry”.
claim 16 recites “a corresponding slot of the reader device”;
When considered individually, and as a whole, each of these additional elements amount to merely "apply it", as they are merely applying the abstract idea to the technical environment of the contactless interface having at least one antenna, the contact interface having the power and communication circuitry, the slot to receive the payment device, the chip of the payment device, the cryptographic processing unit, the near field communication (NFC) device, the a payment card comprising a chip, and the corresponding slot of the reader device.
Dependent claims 2-9 and 12-19 merely expand upon the abstract ideas of the independent claims, and are therefore rejected under the same rationale as claims 1 and 11 respectively.
Conclusion of 35 USC §101
18. 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.
19. 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 § 103
20. 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.
21. 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.
22. 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.
23. Claims 1-3, 5-9, 11-13, and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over US10417628B2 to Terra et al. in view of US20150312038A1 to Palanisamy and US7357309B2 to Ghosh et al.
24. As per claim 1:
Terra et al. discloses the following limitations:
A payment reader …in a payment device, comprising (Col.2, lines 30-33; discloses a payment reader interfacing with a payment device)
reader circuitry executing first computer-readable instructions for (Col.6, lines57-60, 62-63; col.7, lines 40-42; discloses reader circuitry executing first computer-readable instructions to control payment reader operations)
interfacing with a payment device during a payment transaction to establish a communication path between the payment reader and the payment device (Col.5, lines 46-48, 61-63; discloses establishing a communication path between the reader and the payment device during a transaction)
communication circuitry communicatively coupled with a server, and executing second computer-readable instructions for (Col.6, lines36-38; col.11, lines 5-7; discloses communication circuitry on the reader communicatively coupled with a payment server, executing instructions to communicate transaction information)
Terra et al does not disclose, however, Palanisamy, as shown, teaches the following limitations:
(A payment) … to replenish tokens… ([0017] discloses replenishing tokens on a communication device)
obtaining a first token stored in a token storage of the payment device ([0074], [0098] discloses the token stored on the payment device and transferred to the reader during transaction)
providing the first token from the payment device to the server ([0099]-[0100] discloses the first token being passed from the access device/merchant via acquirer to the token server)
receiving … a second token for the payment device from the server, wherein … to store the second token in the token storage of the payment device, wherein… the second token are received from the server in response to the server determining that the first token is not valid for a subsequent payment transaction ([0017], [0064], [0091] discloses the previously provisioned token becoming invalid and a new token being received from the token server to replace it)
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 enhancing the security of storing sensitive information or a token on a communication device of Palanisamy (‘038, [0005]) with teaching of Terra et al. for process the electronic payment transaction wherein the payment terminal determines that the payment card is not a chip card or determines that the payment card is a chip card (‘628, col/line 2/66-3/3) for requesting a new token from a token server for subsequent use and transferring token to the merchant wherein merchant generating an authorization request that to be sent to acquirer, and replacing previously provisioned token into a new token (‘038, [0017], [0091], [0098], [0100]).
Neither Terra et al. nor Palanisamy disclose, however, Ghosh et al., as shown, teaches the following limitations:
receiving a script … for the payment device from the server, wherein the script includes at least one instruction for a processing unit of the payment device … wherein the script … received from the server… (Col.6, lines 56-59; col.7, lines 6-10; col.10, lines 65-66; discloses receiving from the server a command script for the payment device’s processing unit to execute)
the reader circuitry executes the first computer-readable instructions for providing the script and the second token to the payment device via the communication path between the payment reader and the payment device established during the payment transaction while the payment device remains interfaced with the reader circuitry, the processing unit of the payment device executing the script, while the payment device remains interfaced with the reader circuitry, in accordance with EMV instructions, to store the second token in the token storage of the payment device, the second token replacing the first token for the subsequent payment transaction (Col.4, lines 10-13; col/line 10/66-11/4; col.11, lines 5-7; discloses the reader providing the command script and updated data back to the payment device over the same communication path established for the transaction while the device remains connected, with the device’s processing unit acting in accordance with EMV instructions to store the updated data and new EMV-ticket replaces prior for subsequent transactions)
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 enhancing the security of storing sensitive information or a token on a communication device of Palanisamy (‘038, [0005]) and a method and system for enabling a mobile terminal to conduct an EMV transaction via a wireless access node in the EMV card-reader terminal for connecting a mobile terminal to the card-reader terminal of Ghosh et al. (‘309, col.2, lines 15-19) with teaching of Terra et al. for process the electronic payment transaction wherein the payment terminal determines that the payment card is not a chip card or determines that the payment card is a chip card (‘628, col/line 2/66-3/3) for providing the command script to the EMV card-reader terminal over the communication path established for the transaction and acting by the processing unit in accordance with EMV instructions to store the updated data and replacing a new EMV-ticket prior for subsequent transactions (‘309, col.4, lines 10-13; col.6, lines 56-59; col.7, lines 6-10; col/line 10/66-11/4; col.11, lines 5-7).
25. As per claim 2:
Terra et al. discloses the following limitations:
The payment reader of claim 1, wherein the reader circuitry comprises a contactless interface having at least one antenna (Col.8, lines 55-56, 58-59; col.5, lines 36-37; discloses the reader’s contactless interface having an antenna)
26. As per claim 3:
Terra et al. discloses the following limitations:
The payment reader of claim 2, wherein the contactless interface of the reader circuitry interfaces with the payment device by inductive coupling to enable wireless communication between the reader circuitry and the payment device (Col.4, lines 55-58; col.5, lines 46-48; discloses that the payment device “inductively coupled” to the payment reader enabling wireless communication)
27. As per claim 5:
Terra et al. discloses the following limitations:
The payment reader of claim 1, wherein the reader circuitry comprises a contact interface having a power and communication circuitry (Col.8, lines 46-49; discloses that “power and communication circuitry” of the contact interface for directly interfacing with the chip card)
28. As per claim 6:
Terra et al. discloses the following limitations:
The payment reader of claim 5, further comprising a slot to receive the payment device, wherein the contact interface of the reader circuitry interfaces with contacts on a chip of the payment device when the payment device is inserted in the slot (Col.5, lines 61-63; col.9, lines 7-9; discloses a slot and contact pins of the reader engaging the chip card’s contacts when inserted)
29. As per claim 7:
Terra et al. discloses the following limitations:
The payment reader of claim 6, wherein the power and communication circuitry of the contact interface provides power to the payment device via at least one contact on the chip of the payment device (Col.5, lines 63-67; col.9, lines 4-6, 10-11, 12, 14-15; discloses that the reader providing power to the EMV chip through the chip contacts via the contact interface’s power circuitry (VCC, GND, etc.))
30. As per claim 8:
Terra et al. discloses the following limitations:
The payment reader of claim 1, further comprising a cryptographic processing unit that executes third computer-readable instructions for performing cryptographic functions during processing of payment transactions (Col.6, lines 62, 64-66; col.10, lines 15-18; discloses that a cryptographic processing unit on the reader executing instructions for cryptographic functions during payment transactions)
31. As per claim 9:
Terra et al. discloses the following limitations:
The payment reader of claim 8, wherein the cryptographic processing unit executes the third computer-readable instructions for (Col.10, lines 34-40; discloses that the cryptographic processing unit executing instructions for cryptographic functions including encryption and decryption during payment transactions)
encrypting the first token prior to the first token being provided to the server (Col.10, lines 36-40; discloses that the cryptographic processing unit can encrypt payment information received from the device before transmission to the server)
decrypting the script and the second token received from the server prior to the script and the second token being provided to the payment device via the communication path (Col.10, lines 36-40; discloses that the cryptographic processing unit performs decryption during transaction processing; bidirectional crypto capability covers decryption of inbound server payloads)
32. As per claim 11:
Terra et al. discloses the following limitations:
A method … in a payment device, comprising (Col.2, lines 28-33; discloses payment transaction methods involving a payment reader and payment device)
interfacing a payment device to a reader device during a payment transaction to establish a communication path between the reader device and the payment device (Col.3, lines 25-27; col.5, lines 21-23; discloses establishing a communication path between the reader and the payment device during a transaction)
providing, by the reader device, the first token from the payment device to a server (Col.3, lines 52-55; discloses the reader forwarding payment data to the payment server)
Terra et al does not disclose, however, Palanisamy, as shown, teaches the following limitations:
(A method) … for replenishing tokens … ([0017] discloses methods of replacing previously provisioned tokens on a communication device)
obtaining a first token stored in a token storage of the payment device ([0074], [0098] discloses the token stored on the payment device and transferred to the reader during transaction)
receiving … a second token for the payment device from the server, wherein … to store the second token in the token storage of the payment device, wherein… the second token are received from the server in response to the server determining that the first token is not valid for a subsequent payment transaction ([0017], [0064], [0091] discloses the previously provisioned token becoming invalid and a new token being received from the token server to replace it)
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 enhancing the security of storing sensitive information or a token on a communication device of Palanisamy (‘038, [0005]) with teaching of Terra et al. for process the electronic payment transaction wherein the payment terminal determines that the payment card is not a chip card or determines that the payment card is a chip card (‘628, col/line 2/66-3/3) for requesting a new token from a token server for subsequent use and transferring token to the merchant wherein merchant generating an authorization request that to be sent to acquirer, and replacing previously provisioned token into a new token (‘038, [0017], [0091], [0098], [0100]).
Neither Terra et al. nor Palanisamy disclose, however, Ghosh et al., as shown, teaches the following limitations:
receiving, by the reader terminal, a script … for the payment device from the server, wherein the script includes at least one instruction for a processing unit of the payment device … wherein the script … received from the server… (Col.6, lines 56-59; col.7, lines 6-10; col.10, lines 65-66; discloses receiving from the server a command script for the payment device’s processing unit to execute)
communicating, by the reader device, the script and the second token received from the server to the payment device via the communication path between the reader device and the payment device established during the payment transaction while the payment device remains interfaced with the reader device (Col/line 10/66-11/3; col.11, lines 5-7; discloses the reader communicating the command script and updated data back to the device over the established communication path while the device remains connected)
executing, by the processing unit of the payment device, the script communicated by the reader device, while the payment device remains interfaced with the reader device, in accordance with EMV instructions, to store the second token in the token storage of the payment device, the second token replacing the first token in the token storage for the subsequent payment transaction (Col.11, lines 2-4, 6-7; col.4, lines 10-13; discloses the payment device’s processing unit acting in accordance with EMV instructions to store the updated data; new EMV-ticket replaces prior one for subsequent transactions)
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 enhancing the security of storing sensitive information or a token on a communication device of Palanisamy (‘038, [0005]) and a method and system for enabling a mobile terminal to conduct an EMV transaction via a wireless access node in the EMV card-reader terminal for connecting a mobile terminal to the card-reader terminal of Ghosh et al. (‘309, col.2, lines 15-19) with teaching of Terra et al. for process the electronic payment transaction wherein the payment terminal determines that the payment card is not a chip card or determines that the payment card is a chip card (‘628, col/line 2/66-3/3) for providing the command script to the EMV card-reader terminal over the communication path established for the transaction and acting by the processing unit in accordance with EMV instructions to store the updated data and replacing a new EMV-ticket prior for subsequent transactions (‘309, col.4, lines 10-13; col.6, lines 56-59; col.7, lines 6-10; col/line 10/66-11/4; col.11, lines 5-7).
33. As per claim 12:
Terra et al. discloses the following limitations:
The method of claim 11, wherein the payment device is a near field communication (NFC) device and the reader device comprises a contactless interface having at least one antenna (Col.8, lines 55-56, 58-59; col.5, lines 36-37; discloses the reader’s contactless interface having an antenna)
34. As per claim 13:
Terra et al. discloses the following limitations:
The method of claim 12, wherein interfacing the payment device to the reader device includes inductively coupling the NFC device with the contactless interface of the reader device to enable wireless communication between the reader device and the NFC device (Col.4, lines 55-58; col.5, lines 46-48; discloses that the payment device “inductively coupled” to the payment reader enabling wireless communication)
35. As per claim 15:
Terra et al. discloses the following limitations:
The method of claim 11, wherein the payment device is a payment card comprising a chip and the reader device comprises a contact interface having a power and communication circuitry (Col.8, lines 46-49; discloses that “power and communication circuitry” of the contact interface for directly interfacing with the chip card)
36. As per claim 16:
Terra et al. discloses the following limitations:
The method of claim 15, wherein interfacing the payment device to the reader device includes inserting the payment card into a corresponding slot of the reader device to enable contacts of the chip to engage with corresponding contacts of the contact interface (Col.5, lines 61-63; col.9, lines 7-9; discloses a slot and contact pins of the reader engaging the chip card’s contacts when inserted)
37. As per claim 17:
Terra et al. discloses the following limitations:
The method of claim 16, further comprises providing power to the payment device with the power and communication circuitry via at least one contact on the chip of the payment device (Col.5, lines 63-67; col.9, lines 4-6, 10-11, 12, 14-15; discloses that the reader providing power to the EMV chip through the chip contacts via the contact interface’s power circuitry (VCC, GND, etc.))
38. As per claim 18:
Terra et al. discloses the following limitations:
The method of claim 11, further comprising performing cryptographic functions during processing of payment transactions with a cryptographic processing unit of the reader device (Col.6, lines 62, 64-66; col.10, lines 15-18; discloses that a cryptographic processing unit on the reader executing instructions for cryptographic functions during payment transactions)
39. As per claim 19:
Terra et al. discloses the following limitations:
The method of claim 18, wherein performing cryptographic functions includes (Col.10, lines 34-40; discloses that the cryptographic processing unit executing instructions for cryptographic functions including encryption and decryption during payment transactions)
encrypting, using the cryptographic functions, the first token prior to the first token being provided to the server (Col.10, lines 36-40; discloses that the cryptographic processing unit can encrypt payment information received from the device before transmission to the server)
decrypting the script and the second token received from the server prior to the script and the second token being communicated to the payment device via the communication path (Col.10, lines 36-40; discloses that the cryptographic processing unit performs decryption during transaction processing; bidirectional crypto capability covers decryption of inbound server payloads)
40. Claims 4 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over US10417628B2 to Terra et al. in view of US20150312038A1 to Palanisamy, US7357309B2 to Ghosh et al., and EP2637131B1 to Aabye et al.
41. As per claim 4:
Neither Terra et al. nor Palanisamy or Ghosh et al. disclose, however, Aabye et al., as shown, teaches the following limitations:
The payment reader of claim 3, wherein the reader circuitry obtains the first token stored in the payment device during a first inductive coupling of the contactless interface with the payment device and the reader circuitry provides the script and the second token to the payment device during a second inductive coupling of the contactless interface with the payment device ([0044], [0054] discloses a two-tap (i.e., two inductive coupling) process: first tap reads from device, second tap delivers issuer script + data to device via NFC)
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 enhancing the security of storing sensitive information or a token on a communication device of Palanisamy (‘038, [0005]), a method and system for enabling a mobile terminal to conduct an EMV transaction via a wireless access node in the EMV card-reader terminal for connecting a mobile terminal to the card-reader terminal of Ghosh et al. (‘309, col.2, lines 15-19), and a system for using a contactless element as part of a payment transaction for facilitating the transfer of transaction data or transaction records to a memory that is part of the payment device of Aabye et al. (‘131, [0013] with teaching of Terra et al. for process the electronic payment transaction wherein the payment terminal determines that the payment card is not a chip card or determines that the payment card is a chip card (‘628, col/line 2/66-3/3) for performing two-tap process where a first tap is used to perform a payment transaction, followed by a second tap at a later time to enable data provided by an Issuer or payment processor to be transferred to the payment application or payment device and providing data or script be sent to the payment device using the near field communications capability (‘131, [0044], [0054]).
42. As per claim 14:
Neither Terra et al. nor Palanisamy or Ghosh et al. disclose, however, Aabye et al., as shown, teaches the following limitations:
The method of claim 13, wherein obtaining the first token includes obtaining the first token stored in the NFC device during a first inductive coupling of the reader device and the NFC device and communicating the script and the second token includes providing the script and the second token to the NFC device during a second inductive coupling of the reader device and the NFC device ([0044], [0054] discloses a two-tap (i.e., two inductive coupling) process: first tap reads from device, second tap delivers issuer script + data to device via NFC)
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 enhancing the security of storing sensitive information or a token on a communication device of Palanisamy (‘038, [0005]), a method and system for enabling a mobile terminal to conduct an EMV transaction via a wireless access node in the EMV card-reader terminal for connecting a mobile terminal to the card-reader terminal of Ghosh et al. (‘309, col.2, lines 15-19), and a system for using a contactless element as part of a payment transaction for facilitating the transfer of transaction data or transaction records to a memory that is part of the payment device of Aabye et al. (‘131, [0013] with teaching of Terra et al. for process the electronic payment transaction wherein the payment terminal determines that the payment card is not a chip card or determines that the payment card is a chip card (‘628, col/line 2/66-3/3) for performing two-tap process where a first tap is used to perform a payment transaction, followed by a second tap at a later time to enable data provided by an Issuer or payment processor to be transferred to the payment application or payment device and providing data or script be sent to the payment device using the near field communications capability (‘131, [0044], [0054]).
Response to Arguments
43. Claims 1-9 and 11-19 are rejected. After careful consideration of applicant arguments, the examiner finds them to be not persuasive.
Rejection under 35 USC § 101
44. Applicant’s arguments toward 35 U.S.C. § 101 rejection is not persuasive. Amended independent claims 1 and 11 do not have additional elements that could lead to an improvement in the functioning of a computer, or an improvement to other technology or technical field.
45. Applicant is of the opinion that presently amended claims are not directed to an abstract idea, the amended claim features such as “the reader device provides the script and the second token to the payment device via the communication path which was established during the payment transaction…” and “while the payment device remains interfaced with the reader device … the second token replacing the first token for the subsequent payment transaction” integrated into a practical application.
Examiner respectfully disagrees.
Mentioned above the claim features performed by using the computer components. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)).
Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to the abstract idea.
The claims are not patent eligible.
46. Applicant is of the opinion that the claims recite significantly more than the judicial exception, and concludes that “the presently amended claims are directed to a reader-mediated, device-side replenishment operation that changes the operative state of the payment device itself through the same communication path established for the current payment transaction, rather than to an abstract idea of token management.”.
Examiner respectfully disagrees.
Applicant’s argument is not persuasive for the reasons already discussed above – the additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field. As per the identification of the “additional elements” under Step 2A Prong Two and Step 2B, the rejection properly identifies the elements which are recited in the claim beyond the abstract idea, including “receiving, by the reader device, a script and a second token for the payment device from the server” and “the second token replacing the first token in the token storage for the subsequent payment transaction”. Under Step 2A Prong Two, the “additional elements” have been identified and the limitations are not indicative of integration into a practical application. Under Step 2B, the additional elements have been evaluated and do not amount to “significantly more”. Note that Revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. The identification of the additional elements in the claim from Step 2A Prong Two is carried over as well as the conclusion from Step 2A Prong Two on the considerations discussed in MPEP 2106.05(a)-(c), (e), (f), and (h).
The claims are not patent eligible.
Rejections under 35 U.S.C. § 112(a)
47. Rejections of claims 1-20 due to amendments to claims 1 and 11 are withdrawn.
Rejections under 35 U.S.C. § 103
48. Applicant is of the opinion that the prior art references Kurani et al. and Lopreiato et al. do not teach or suggest amended claims 1 and 11.
Applicant arguments are no longer applicable because they are moot in light of the new ground of rejection.
Conclusion
49. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US20230153792A1 – Kurani et al. – Discloses a computer system that receives an indication from a user that the user wishes to perform a mobile wallet transaction to transfer funds to a recipient using a mobile device and wherein the transaction is authenticated by the computer system.
US20150339663A1 – Lopreiato et al. – Discloses a method for maintaining a token database in a computer system, where the token database maps tokens to primary account numbers (PANs) for payment card accounts and wherein the method further includes storing a respective entry in the token database for a token.
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/AMANULLA ABDULLAEV/ Examiner, Art Unit 3692
/ABHISHEK VYAS/ Supervisory Patent Examiner, Art Unit 3691
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