NON-FINAL REJECTION
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-8, 14, and 15 in the reply filed on December 18,2025 is acknowledged.
Claims 9-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1-15 are 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 .
Claim Objections
Claims 1 and 7 are objected to because of the following informalities: typographical error. The claims recite “token” twice in the limitation “the at least one offline generated token token is transmitted…”
Appropriate correction is required.
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 1-8, 14, and 15 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 1-6 are directed to an apparatus. Claims 7 and 8 are directed to a method. Claims 14 is directed to a system and claim 15, a non-transitory computer readable medium. Therefore, these claims fall within the four statutory categories of invention.
For example, claim 1 recites an abstract idea of receiving a replacement token with a monetary value. The claim under its broadest reasonable interpretation recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The certain methods of organizing human activity abstract idea grouping is defined as concepts related to fundamental economic principles or practices, commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. See MPEP § 2106.04(a)(2), subsection II. The claim limitations reciting the abstract idea are grouped within the “certain methods of organizing human activity” grouping of abstract ideas as they relate to receiving a replacement token with a monetary value. 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 secure element for use in an electronic payment transaction system, the secure element comprising a processor and an interface, wherein
at least one offline generated token of the secure element comprises a monetary value and a token generation history;
the secure element being adapted to enter a token replacement mode of the secure element for replacing the at least one offline generated token of the secure element, if a threshold value is exceeded;
in the token replacement mode the secure element transmitting the at least one offline generated token via the interface and receiving at least one replacement token via the interface, wherein a monetary value transmitted is identical with the monetary value received;
wherein
the token replacement mode is an offline token replacement mode; the threshold value is compared with a token history value of the at least one offline generated token;
the at least one offline generated token token is transmitted to a local special secure element of the electronic payment transaction system; and
the at least one replacement token is received from the local special secure element.
Independent claims 7, 14, and 15 recite 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 secure element, special secure element, token, and interface 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 receiving a replacement token with a monetary value. Viewed as a whole, the use of secure element, special secure element, token, and interface 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 secure element, special secure element, token, and interface to perform the steps amounts to no more than using generic hardware or software to automate and/or implement the abstract idea of receiving a replacement token with a monetary value. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of receiving a replacement token with a monetary value. 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 wherein the secure element being adapted in an offline payment transaction mode to create and/or receive at least one token history entry of a token generation history for a token generated in an offline transaction; and/or
to perform a payment transaction with the offline generated token, if the threshold value is not exceeded, or with the replacement token; and/or in the token replacement mode to perform an atomic token replacement transaction.
wherein the secure element stores tokens or at least the monetary value and the secret token element of tokens in an internal storage unit of the secure element; and/or
the secure element stores the token generation history of tokens or tokens in a local, external storage unit.
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.
Claim Rejections - 35 USC § 103
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.
Claims 1-8, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over WO-9844429-A1 to Teicher (“Teicher”) in view of US Publication No. 2025/0150442 to Jhala (“Jhala”),
As per claim 1, Teicher discloses a secure element for use in an electronic payment transaction system, the secure element comprising a processor and an interface, (Fig. 8), wherein
at least one offline generated token of the secure element comprises a monetary value and a token generation history (Fig. 8, 19; p.6, ll. 7-11; p.28, l. 26 – p. 29, l. 13 - payment card with e-purse and previous editions);
the secure element being adapted to enter a token replacement mode of the secure element for replacing the at least one offline generated token of the secure element, if a threshold value is exceeded (p. 28, l. 26 – p. 29, l. 13 – organization in an electronic coin purse for sharing the allocated memory for a specific electronic coin type between two electronic editions…maximum with number of electronic coins of the respective type, which can be stored in the card; p. 31, l.9-p. 32-1.19 -replacing an older electronic coin edition with a new one);
in the token replacement mode the secure element transmitting the at least one offline generated token via the interface and receiving at least one replacement token via the interface, wherein a monetary value transmitted is identical with the monetary value received (p. 31, l. 9-p.32, l. 19 – replacing an older electronic coin edition with a newer one…exchange of an equal, selectable number of electronic coins…)
wherein
the token replacement mode is an offline token replacement mode (Fig. 8, p. 32, ll. 4-7 – a selectable number of electronic coins of the same edition and denomination will be exchanged between a purse and a drawer or a drawer and a pool, on a first-in-first out or random picking basis at each stored-value device);
the at least one offline generated token is transmitted to a local special secure element of the electronic payment transaction system; and the at least one replacement token is received from the local special secure element (p. 28, l. 13- p. 29, l. 19; pg. 31, l. 9-p. 32-l. 19 – POS is the local special secure element).
Teicher does not expressly disclose the threshold value is compared with a token history value of the at least one offline generated token.
Jhala discloses the threshold value is compared with a token history value of the at least one offline generated token (paragraph [0066] – compare data provided in the request to data included in the history of the particular token; Fig. 1A -token expiration, instrument expiration etc.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Teicher by including the features of Jhala as it ensures that the token is current by reviewing its history. Applying the known technique of Jhala into the system of Teicher would have been recognized by those of ordinary skill in the art as resulting in an improved system that would have yielded predictable results.
As per claim 2, Teicher discloses wherein the secure element is adapted in an online mode to delete the token generation history of a token after transmitting the token generation history of the token to a token register of the payment transaction system; and/or tokens of the electronic payment transaction system comprise a monetary value and a secret token element, wherein the secret token element and a public token element of the token form a token element pair; and/or tokens of the electronic payment transaction system have to be registered in a token register with a token reference of the token, the token reference comprising the public token element and/or the monetary value (see claim 1 above; p. 35, l. 20 – electronic coin 500-1 has been effectively destroyed ).
As per claim 3, Teicher discloses wherein the token history value corresponds to the storage size of the token generation history or to the number of history entries in the token generation history; and/or offline generated tokens for which the threshold value is exceeded will be replaced; and/or the replacement token comprises at most two token generation history entries, comprises no token history or only a single token history entry (see claim 1 above; p. 35, l.14 -p. 36, l. 30).
As per claim 4, Teicher discloses wherein the secure element being adapted in an offline payment transaction mode to create and/or receive at least one token history entry of a token generation history for a token generated in an offline transaction; and/or to perform a payment transaction with the offline generated token, if the threshold value is not exceeded, or with the replacement token; and/or in the token replacement mode to perform an atomic token replacement transaction (see claim 1 above; p. 35, l. 25-26 – payment card 500 sends a copy of encrypted electronic coin 500-2 to POS).
As per claim 5, Teicher discloses wherein the secure element stores tokens or at least the monetary value and the secret token element of tokens in an internal storage unit of the secure element; and/or the secure element stores the token generation history of tokens or tokens in a local, external storage unit (see claim 1 above; p. 35, l.14 -p. 36, l. 30).
As per claim 6, Teicher discloses wherein the monetary value of the one replacement token is identical with the monetary value of the one offline generated token, or the monetary value of the one offline generated token/replacement token is identical with the sum of the monetary values of the replacement tokens received/offline generated tokens transmitted, or the sum of the monetary values of the replacement tokens received/offline generated tokens transmitted is identical to the sum of the monetary values of the offline generated tokens transmitted/replacement tokens received, wherein the number of tokens transmitted is identical with the number of tokens received (see claim 1 above; p. 35, l.14 -p. 36, l. 30).
Claim 7 is rejected on the same rationale as claim 1 above.
As per claim 8, Teicher discloses sending a replacement request including the monetary value of the at least one offline generated token to be replaced; prior to transmitting deactivating the at least one offline generated token to be replaced, and reactivating the at least one offline generated token to be replaced if the at least one replacement token is not received; prior to transmitting encrypting the at least one offline generated token and transmitting a corresponding decryption key K2 after receipt of the at least one replacement token (see claim 1 above; p. 35, l.14 -p. 36, l. 30; Fig. 30A-I) .
Claims 14 and 15 are rejected on the same rationale as claim 1 above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JALATEE WORJLOH whose telephone number is (571)272-6714. The examiner can normally be reached Monday-Friday 6:00am-2:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Hayes can be reached at (571) 272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jalatee Worjloh/Primary Examiner, Art Unit 3697