DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This is a final office action in response to the amendment received on 3/4/2026 (“Amendment”).
Claims 1, 9, 11, 12, 16, and 20 have been amended. Claims 1-20 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/1/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Amendment to the Specification
The amendment to the Specification received on 3/4/2026 is acknowledged.
Official Notice Taken in Last Office Action
As official notice was taken in the previous office action, the common knowledge or well-known in the art statement is taken to be admitted prior art because the common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner's assertion of official notice or that the traverse was inadequate (see MPEP 2144.03 C). The common knowledge or well-known in the art statement is taken to be admitted prior art include: a wallet that includes multiple payment instruments administered by one entity is old and well known
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
MPEP 2106 provides step(s) in determining eligibility under 35 U.S.C. § 101. Specifically, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any additional elements in the claim must integrate the judicial exception into a practical application. If not, the inquiry continues to see whether any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include mathematical concepts, mental processes, and certain methods of organizing human activities.
Under Step 1, claims 1-11 are directed to a to processor-based server, claims 12-19 are directed a method (i.e. process) while claim 20 is directed to a non-transitory computer-readable medium. Thus, the claimed inventions are directed towards one of the four statutory categories under 35 USC § 101. Nevertheless, the claims also fall within the judicial exception of an abstract idea without significantly more.
Step 2A, 1st prong:
Claim 12 recites: A method of managing universal identification-based payment instruments, comprising:
a) receiving at least one digital certificate as a universal identification of a user;
b) associating the at least one digital certificate with at least one payment instrument of the user, wherein the at least one payment instrument is associated with a first contactless card and a second contactless card;
c) generating a public key and a private key pairing with the public key, the public key and the private key being associated with the at least one payment instrument;
d) incorporating the public key into the digital certificate;
e) transmitting the private key to a user device associated with the user and the second contactless card; and
f) receiving an invoice signed with the private key from the user device, wherein the signed invoice indicates permission to transfer a charge associated with the invoice from the first contactless card to the second contactless card.
(Emphasis added on the additional element(s))
The claim recites a process of managing universal identification-based payment instruments, in particular steps comprising a) receiving at least one certificate as a universal identification of a user; b) associating the at least one certificate with at least one payment instrument of the user wherein the at least one payment instrument is associated with sources, i.e., first source and second source (the user); c) generating a public key and a private key pairing with the public key, the public key and the private key being associated with the at least one payment instrument; d) incorporating the public key into the certificate; e) transmitting the private key to a user; and f) receiving an invoice signed with the private key from the user, wherein the signed invoice, i.e., invoice with the user’s signature indicates permission to transfer a change associated with the invoice from the first source to the second source. In other word, the claim recites a process that allows a user to sign an invoice in order to provide permission for the charge on the invoice, i.e., charge that is responsible for another person, to be transfer to the user. As such, the claim recites a certain method of organizing human activity, i.e., economic practices and/or commercial interactions. The steps related to use of certificate and signature are also abstract idea, i.e., notarization and authentication, that fall within economic practices and/or commercial/legal interactions involving signature to assume liability.
The claim’s recitations of generating of public key pair and use of the signature using the key pair are also abstract idea, i.e., mathematical concept.
The other independent claim(s), i.e., claims 1 and 20, are significantly similar to claim 12. As such, claims 1 and 20 also recite abstract idea.
Under the Step 2A (prong 2), this judicial exception is not integrated into a practical application. Specifically, the additional elements in the claim(s), i.e., computer server including a memory and a processor, a non-transitory computer-readable medium, computer arrangement, contactless card(s), digital, and user device associated with the user, amount to no more than mere instructions to implement the abstract idea and/or merely uses a computer as a tool to perform an abstract idea – see MPEP 2106.05(f) and/or generally linking the use of the judicial exception to a particular technological environment or field of use (i.e., contactless cards). There is no indication that the claim improves upon the computer server comprising a memory and a processor and/or computer arrangement individually or in combination.
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e. whether the additional elements amount to significantly more than the exception itself). Here, the claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Specifically, the claim(s) as a whole, taken individually and in combination, do not provide an inventive concept. As explained above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed judicial exception amount to no more than mere instructions to implement the abstract idea and/or merely uses a computer as a tool to perform an abstract idea. Mere instructions to implement the abstract idea on a computer, or merely using the computer as a tool to perform an abstract idea to apply the exception using a generic computer component cannot provide an inventive concept. Looking at the limitations as a combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of the elements improves the functioning of the recited computer component(s) individually or in combination.
Dependent claims 2 and 18 recite that the certificate is signed by a notary thereby further reciting abstract idea, i.e., certain method of organizing human activity. The additional element of digital in describing the type of signature is recited at high level generality that it amounts no more than using a generic computer or instructions to perform the abstract idea. The addition does not improve upon the computer performing the abstract idea. Further, the claim does not include an inventive concept as the recited additional elements individually and/or in combination do not amount to significantly more.
Dependent claims 3 and 19 recite that the certificate includes a further public key associated with the notary and used to verify the digital signature. The public key pair used in digital signature is a mathematical concept for achieving the further abstract idea of signature and verification. Hence, the claims recite abstract idea.
Dependent claims 4 and 15 recite storing of the certificate in a centralized ledger which further expands the abstract idea. The additional element of computer database is recited at high level amounting to no more than using a generic computer component to perform the judicial exception. The addition does not improve upon the computer performing the abstract idea. Further, the claim does not include an inventive concept as the recited additional elements individually and/or in combination do not amount to significantly more.
Dependent claim 5 recites that the computer server is configured to receive a transaction request digitally signed using a digital signature. As mentioned above, the claim further expands the concept of use of signature and mathematical concept of public key pair in signing. The examiner further submits that description of what the transaction request includes is non-functional descriptive material.
Dependent claim 6 further expands on the abstract idea as described in claim 5 with additional concept of determining an ownership of the at least one payment instrument to be the user and verification of the at least one digital certificate.
Dependent claim 7 further expands on the abstract idea of further signature applied by an authority issuing the certificate and use of the public key pair mathematical concept.
Dependent claims 8-11, 13-14, and 16-17 further expand on the abstract idea, i.e., description of what are included in the at least one certificate, signing using mathematical concept, and storing.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 2, 4-6, 10-13, 15, 16, 18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 1 245 008 B1. (“Kausik”) in view of US Patent No. 6,658,568 (“Ginter”) and in view of US Patent Publication No. 20130051610 (“Roach”).
Per claims 1, 12, and 20, Kausik teaches a method of managing identification-based payment instructions, comprising:
receiving at least one digital certificate as an identification of a user ([0014], the corresponding public-key digital certificate containing the cardholder’s payment particular; [0023]);
associating the at least one digital certificate with at least one payment instrument of the user ([0014], the piece of software constitutes the payment card … comprises the digital certificate; [0023], combines the payment information with the cardholder’s public key);
generating a public key and a private key pairing with the public key, the public key and the private key being associated with the at least one payment instrument ([0014], generates a public key-private key pair for the cardholder; [0021]);
incorporating the public key into the digital certificate (Fig. 2A; [0014], binds the cardholder’s public key in a digital certificate; [0023], binding of the public key to the digital certificate); and
transmitting the private key to a user device associated with the user ([0021], the cardholder’s private key is typically stored on the cardholder’s computer; [0025]).
Kausik further teaches a computer server including a memory and a processor (computer arrangement)(claims 1, 9 and 13).
The difference, however, is found in a descriptive material in describing identification or intended use of the digital certificate which does not move to distinguish over prior art as the description does not affect the positively recited step(s) in the method claim nor does it affect the system/non-transitory medium claim(s) either structurally or functionally.
However, for the purpose of compact prosecution, Ginter teaches digital certificate as a universal identification (c. 30, ll. 1-28, use of digital certificate to attest person’s identity like driver’s license).
One of ordinary skill in the art would have recognized that applying the known use of certificate in Ginter to the known certificate of Kausik before the effective filing date of the claimed invention would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such use into analogous art. Further, it would have been recognized by those of ordinary skill in the art before the effective filing date of the claimed invention that modifying digital certificate system of Kausik to be used as universal identification results in an improved invention because applying said technique improves the overall security of the invention by ensuring the identity of the user (i.e., by the government authorities, etc.).
Kausik/Ginter does not particularly teach that the at least one payment instrument is associated with a first contactless card and a second contactless card; that the user device is associated with the second contactless card; and receiving an invoice signed with the private key from the user device, wherein the signed invoice indicates permission to transfer a charge associated with the invoice from the first contactless card to the second contactless card.
Roach, however, teaches the at least one payment instrument is associated with a first card and a second card; that the user device is associated with the second card; and receiving an invoice signed from the user device, wherein the signed invoice indicates permission to transfer a charge associated with the invoice from the first card to the contactless card ([0005], balance on a credit card can transfer some or all of the outstanding balance from one credit card to another credit card; [0231], contract with signature).
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to include the technique of transferring to another card as taught by Roach to Kausik/Ginter for streamlining the process of balance transfers.
While Roach teaches signatures, Roach is silent to signing with the private key. However, as Kausik generally teaches digital signatures using the private key ([0006]), it would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to utilize any known signature scheme, including the digital signature using private key, as the signature scheme in Roach producing a predictable result, rendering the claim obvious.
In further reference to recitations the at least one payment instrument is associated with a first contactless card and a second contactless card; further describe that the user device is associated with the second contactless card; and the description of what the signed invoice indicates, i.e., permission to transfer a charge associated with the invoice from the first contactless card to the second contactless card, the descriptions do not further move to distinguish over prior art as the description does not affect the positively recited step(s) in the method claim 12 or the functions of the server and the computer hardware arrangement in claims 1 and 20. For example, what the signed invoice indicate is merely non-functional descriptive material or intended use of the signed invoice.
As per claims 2 and 18, while Kausik/Ginter/Roach teaches encrypting of the digital certificate by the certifying authority’s private key (Ginter: c.84, ll. 18-31), the combination does not particularly teach wherein the at least one digital certificate is digitally signed using a digital signature by a notary.
However, as Ginter teaches notary (c.36, ll. 31-33) and that Kausik/Ginter/Roach teaches certifying authority to be entity that attests (Ginter: c. 30, ll. 1-28; c. 111, ll. 45-55; c. 115, ll.54-59), it would have been obvious to use any known entity, including a notary, as the certifying authority in Kausik/Ginter/Roach.
As per claims 4 and 15, Kausik/Ginter/Roach teaches wherein the computer server is configured to store the at least one digital certificate in a centralized/decentralized computer database (Ginter: c64, ll15-30, databases replicated and synchronized with other databases and/or to provide a distributed database; c.81, ll.32-36, electronic archive stores certificates).
As per claim 5, Kausik/Ginter/Roach teaches wherein the computer server is configured to receive a transaction request digitally signed using a digital signature, the transaction request being associated with the at least one payment instrument, the transaction request including the at least one digital certificate, and the digital signature being generated by the user using the private key associated with the at least one payment instrument ([0029], sends the digitally signed sales draft and the cardholder’s digital certificate).
As per claim 6, Kausik/Ginter/Roach teaches wherein he computer server is configured to: verify the at least one digital certificate included in the transaction request; authenticate the user by decrypting the digital signature using the public key associated with the at least one payment instrument; and determine an ownership of the at least one payment instrument to be the user ([0029], sends the digitally signed sales draft and the cardholder’s digital certificate; [0030]-[0031], uses the cardholder’s verification key to confirm (verify) the digital signature; [0034]-[0035]).
As per claim 10, Kausik/Ginter/Roach further teaches wherein the at least one payment instrument is a virtual payment instrument (Kausik: Fig. 2A).
As per claim 11, Kausik/Ginter/Roach further teaches wherein the computer server is further configured to store on the at least one payment instrument the public key associated with the at least one payment instrument and a digital signature generated using the private key associated with the at least one payment instrument (Kausik: Fig. 2A) (Ginter: c64, ll15-30, databases replicated and synchronized with other databases and/or to provide a distributed database; c.81, ll.32-36, electronic archive stores certificates)(Ginter showing that the server storing certificates teaches that the server of Ginter is capable of storing any information).
As per claim 13, while Kausik/Ginter/Roach teaches wherein the at least one digital certificate is digitally signed using a digital signature by a financial institution (Ginter: c. 23, ll. 64-67, integrated commerce utility system providing a financial clearing house function and certifying authority function; c.84, ll. 18-31).
As per claim 16, while Kausik/Ginter/Roach teaches wherein the at least one digital certificate is digitally signed using a digital signature by a certifying authority (c.84, ll. 18-31), Kausik/Ginter/Roach does not particularly teach that the certifying authority is a department of motor vehicle.
However, as Ginter discloses that the digital certificate as that of a driver’s license (i.e., issued by department of motor vehicle)(c.30, ll. 5-12), it would have been obvious to one of ordinary skill in the art before the effective filing of the claim to substitute the certifying authority to be any known entity, including a department of vehicle, as the certifying authority in Kausik/Ginter/Roach.
Claim(s) 3, 7, 14, 17, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kausik/Ginter/Roach as applied in claims 2, 6, 13, 16, and 18, in further view of US Patent No. 5,497,422 (“Tysen”).
Per claims 3 and 19, Kausik/Ginter/Roach does not specifically teach wherein the at least one digital certificate includes a further public key associated with the notary and used to verify the digital signature.
Tysen, however, discloses wherein the at least one digital certificate includes a further public key associated with the notary (i.e., certifier) and used to verify the digital signature of the notary (i.e., certifier)(c.3, ll.1-20; c8, ll.25-53).
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to combine the technique of including public key of the signer in the certificate and use the public key to verify the certifier as taught by Tysen to Kausik/Ginter/Roach to improve upon the security of the invention.
As per claim 7, Kausik/Ginter/Roach does not specifically teach wherein verify the at least one digital certificate included in the transaction request includes decrypting a further digital signature signing the digital certificate by a further public key of an authority issuing the digital certificate, the further digital signature signing the digital certificate being generated using a private key of the authority issuing the digital certificate.
Tysen, however, discloses wherein verify the at least on digital certificate included in the transaction request includes decrypting a further digital signature signing the digital certificate by a further public key of an authority issuing the digital certificate, the further digital signing the digital certificate being generated using a private key of the authority issuing the digital certificate (c. 3, ll. 15-25, the recipient uses the certifier’s public key to verify the authenticity of the encrypted digest in the certificate of the sender’s public key).
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to include the technique as taught by Tysen to Kausik/Ginter/Roach as the combination improves upon the system of Kausik/Ginter/Roach by ensuring that the validity of the certificate.
As per claim 14, Kausik/Ginter/Roach does not specifically teach wherein the at least one digital certificate includes a further public key associated with the financial institution and used to verify the digital signature.
Tysen, however, discloses wherein the at least one digital certificate includes a further public key associated with the financial institution (i.e., certifier) and used to verify the digital signature of the certifier (c.3, ll.1-20; c8, ll.25-53).
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to combine the technique of including public key of the signer in the certificate and use the public key to verify the certifier as taught by Tysen to Kausik/Ginter/Roach to improve upon the security of the invention.
As per claim 17, Kausik/Ginter/Roach does not specifically teach wherein the at least one digital certificate includes a further public key used to verify the digital signature.
Tysen, however, discloses wherein the at least one digital certificate includes a further public key associated with the certifier and used to verify the digital signature of the certifier (c.3, ll.1-20; c8, ll.25-53).
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to combine the technique of including public key of the certifier in the certificate and use the public key to verify the signer as taught by Tysen to Kausik/Ginter/Roach to improve upon the security of the invention.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kausik/Ginter/Roach as applied in claim 1, in further view of Admitted Prior Art (“APA”).
As per claim 8, Kausik/Ginter/Roach does not particularly teach wherein the at least one payment instrument includes a plurality of payment instruments administered by one entity.
APA teaches a wallet that includes multiple payment instruments administered by one entity.
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to include the APA features of wallet to Kausik/Ginter/Roach as the combination generally improves upon Kausik/Ginter/Roach for allowing the user the freedom to utilize anyone of the multiple payment instruments.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kausik/Ginter/Roach as applied in claim 1, in further view of US Patent Publication No. 2010/0058058 (“Busari”).
Per claim 9, Kausik/Ginter/Roach does not specifically teach wherein the at least one digital certificate include a plurality of digital certificates signed by different authorities.
Busari, however, teaches wherein the at least one digital certificate include a plurality of digital certificates signed by different authorities ([0008], digital certificate contain multiple signatures).
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim technique of Busari to Kausik/Ginter/Roach as the combination provides improvement of attestation by having more entities to attest the public key of the user.
Response to Argument(s)
Claim Objection
The objection is moot in light of the claim amendment(s).
101
In arguing that the claim does not recite abstract idea, the applicant conflates step 2A, 2nd prong test with the step 2A, 1st prong test (see page 12-13). As described above, the recited process allows a user to sign an invoice in order to provide permission for the charge on the invoice, i.e., charge that is responsible for another person, to be transfer to the user. As such, the claim recites a certain method of organizing human activity, i.e., economic practices and/or commercial interactions. The steps related to use of certificate and signature are also abstract idea, i.e., notarization and authentication, as the concept falls within economic practices and/or commercial/legal interactions involving signature to assume liability. The claim’s recitations of generating of public key pair and use of the signature using the key pair are also abstract idea, i.e., mathematical concept.
The applicant asserts that the claimed subject matter includes additional elements that improve upon conventional systems and methods using identification based payment instruments in a non-conventional manner, particularly that the claim provides a system for identification-based payment instruments that can identify account owners through a universal identification, and can apply digital attestations for proof of ownership of the identification-based payment instruments. In response, the examiner would like to point out that the concept of identification-based payment instrument and the attestations for proof of ownership of the identification-based payment instruments, i.e., payment instrument that is associated with identification such as verifiable identification, is an abstract idea, i.e., commercial activity and/or fundamental economic principle. The examiner also submits that the concept of “a universal identification” is merely recited as intended use in the claim.
The applicant further asserts that the combination of elements improves upon technology as the claim “addresses the conventional problem of payment instruments often being controlled by different entities” (see page 17 of the Amendment). In response, the examiner finds that the problem that the applicant points out is not a technological problem, rather a business centric problem.
Furthermore, the concept of one payment instrument that can be converted as proof of co-ownership through validated notarized record of the list of payment instrument is an abstract idea, i.e., commercial interaction and/or fundamental economic principle. In regard to the applicant’s mentioning of use of decentralized computer database, the examiner funds that the only claim that recites decentralized computer database is claim 15. Even when considering the storing the digital identity on a decentralized computer database, the claim does not improve upon decentralized computer database rather uses a conventional computer component in storing of the identity.
As such, the 101 rejection is maintained.
103
The applicant’s argument are based on newly amended claim expression(s) which required new ground of rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20120166332 discloses a bill splitting system for use in making mobile payments by splitting of a bill which is then sent to a second payer device;
US 20200065783 discloses a system and method of using multiple cards for a payment for a card transaction;
US 20070277013 discloses X.509 standard certificate that functions as identity certificate used to make payment;
US Patent No. 6,185,683 discloses a method and system that validate, witness and archive transactions while actively participating in or directing transactions. The invention discloses digital certificate used to validate the identity of user(s);
US Patent No. 10,825,025 discloses online credit card transaction that utilizes credit card certificate that is used across multiple payment account.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN S KIM whose telephone number is (571)270-5287. The examiner can normally be reached Monday -Friday: 7:00 - 3:30.
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/STEVEN S KIM/Primary Examiner, Art Unit 3698
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