DETAILED ACTION
Receipt is acknowledged of a request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) and a submission, filed on March 16, 2026. Claims 1-8, 10-14, and 16-18, and 20 pending.
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 .
Response to Arguments
1) Applicant has amended the claims, thereby overcoming the rejection under 35 U.S.C. 112 (a).
2) As per the 35 USC 101 rejection, Applicant asserts that the claims are not directed to a mental process and not be performed in the human mind. However, the examiner disagrees. The mental process grouping is not limited to the human mind, but also relates to processes that require a human to use a pen and paper. In this case, the claims are performing cryptographic functions and using the additional elements as tools to perform the functions.
3) Applicant submits that "the claim recites specific, cloud-based mechanisms that are integral to how the tokenization is achieved in a public-cloud, multi-tenant environment and that impose meaningful limits." However, the claims or specification has not provided the particulars or algorithms for performing those limitations listed on p. 9 of Remarks.
4) Applicant asserts that the Office Action does not provide support that claim 1 is well-understood, routine , convention at Step 2B. However, the Examiner notes that the Office Action states at step 2B does not use those terms, but instead states that "the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself."
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 an abstract idea without significantly more.
In the instant case, claims 1-8 and 10 is directed to a method. Claims 11-14, 16-18, and 20 are directed to a non-transitory computer-readable. Therefore, these claims fall within the four statutory categories of invention.
For example, claim 1 recites an abstract idea of performing cryptographic functions. The claim under its broadest reasonable interpretation recites limitations grouped within the “mental processes” grouping of abstract ideas. The "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions. The courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that the claimed "conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally," i.e., "as a person would do it by head and hand."); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473, 1474 (Fed. Cir. 2016) (holding that claims to a mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper"). See MPEP § 2106.04(a)(2), subsection III.
The claim limitations reciting the abstract idea are grouped within the “method processes” grouping of abstract ideas performing cryptographic functions. More specifically, the following the bolded claim elements recite additional elements while the other claim elements recite the abstract idea. according to MPEP 2106.04(a).
A method for tokenizing data in a public cloud, comprising:
receiving, at a tokenization service in a public cloud and from a client application, source data associated with a namespace of a plurality of namespaces;
generating, by the tokenization service, a token for the source data according to a token format rule, wherein the token format rule reserves a first digit of the token and a second digit of the token, the first digit being selected to prevent the token from being identified as a payment token, and the combination of the first and second digits uniquely identifying the namespace for the source data;
validating, by the tokenization service, a permission of the client application to tokenize the source data, wherein the validating comprises verifying, using a metadata table in the public cloud, that the client application is authorized for the namespace associated with the source data;
encrypting, by the tokenization service, the source data using an encryption key obtained from an encryption key service in the public cloud, wherein the encryption key is specific to the namespace;
associating, by the tokenization service, the token with the encrypted source data;
persisting, by the tokenization service, the association between the token and the encrypted source data in a token table in the public cloud, wherein the token table is partitioned by application identifier to isolate data between different tenant;
providing, by the tokenization service, the token to the client application; and
persisting, by the tokenization service, the token format for the namespace, a prefix for the token, and an encryption master key identifier for the namespace in a metadata table.
Independent claim 11 recites similar language.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(d)), the additional element(s) of the claim(s) such as the public cloud, metadata table, client application, encryption key service, tokenization service, and token are merely used as tools to perform an abstract idea and/or generally link the use of a judicial exception to a particular technological environment. Specifically, these additional elements perform the steps or functions of collecting and processing known information. Viewed as a whole, the use of public cloud, metadata table, client application, encryption key service, tokenization service, and token as tools to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer or computer networks 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)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). 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 an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106.05), the additional element(s) of the public cloud, metadata table, client application, encryption key service, tokenization service, and token to perform the steps amounts to no more than using generic hardware or software to automate and/or implement the abstract idea of collecting and processing known information. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of collecting and processing known information. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
The dependent claims further describe the abstract idea such as computing, by the tokenization service, a hash of the source data; and
persisting, by the tokenization service, the hash with the token in a source hash table in the public cloud.
The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
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/Jalatee Worjloh/Primary Examiner, Art Unit 3697
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