DETAILED ACTION Status of the Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The following is in response to an amendment dated August 18, 2025. Claims 1-2, 5-7, 9, 11-12, 14-15 and 18-19 are amended. Claims 1-20 are pending. All pending claims are examined.
Response to Arguments
101 Rejection Analysis
101 Analysis
In line with the "2019 Revised Patent Subject Matter Eligibility Guidance," which explains how we must analyze patent-eligibility questions under the judicial exception to 35 U.S.C. § 101. 84 Fed. Reg. 50-57 ("Revised Guidance"), the first step of Alice (i.e., Office Step 2A) consists of two prongs. In Prong One, we must determine whether the claim recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural phenomenon. 84 Fed. Reg. at 54 (Section III.A. I.). If it does not, the claim is patent eligible. Id.
An abstract idea must fall within one of the enumerated groupings of abstract ideas in the Revised Guidance or be a "tentative abstract idea, "with the latter situation predicted to be rare. Id. at 51-52 (Section I, enumerating three groupings of abstract ideas), 54 (Section III.A. I., describing Step 2A Prong One), 56-57 (Section III.D., explaining the identification of claims directed to a tentative abstract idea).
If a claim does recite a judicial exception, the next is Step 2A Prong Two, in which we must determine if the "claim as a whole integrates the recited judicial exception into a practical application of the exception." Id. at 54 (Section II.A.2.) If it does, the claim is patent eligible. Id.
If a claim recites a judicial exception but fails to integrate it into a practical application, we move to the second step of Alice (i.e., Office Step 2B). to evaluate the additional limitations of the claim, both individually and as an ordered combination, to determine whether they provide an inventive concept. Id. at 56 (Section III.B.). In particular, we look to whether the claim:
• Adds a specific limitation or combination of limitations that are not well-understood, routine, conventional in the field, which is indicative that an inventive concept may be present; or
• simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
The analysis in line with current 101 guidelines. Even if the abstract idea is deemed to be novel, the abstract idea is no less abstract (see Flook- new mathematical formula was an abstract idea).
“ In accordance with judicial precedent and in an effort to improve consistency and predictability, the 2019 Revised Patent Subject Matter Eligibility Guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes the following groupings of subject matter, when recited as such in a claim limitation(s) (that is, when recited on their own or per se):
(b) Certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)1 – See Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019 / p.52.
Claim 11 which is illustrative of the independent claims including 1 and 18 recites:
11. A user device system comprising: a non-transitory memory; and one or more hardware processors coupled to the non-transitory memory and configured to read instructions from the non-transitory memory to cause the user device system to perform operations comprising:
transmitting, via short-range wireless communications, using a protocol from a software development kit (SDK) for an application on the user device system,
an indication to perform a processing of an electronic transaction by the
point-of-sale (POS) device; wherein the SDK enables the application to be configured to utilize a plurality of digital tokens with different POS devices to process electronic transactions, and wherein each of the plurality of digital tokens can be sued by a separate token processor network of at least two token processor networks:
receiving, via the short-range wireless communications, a request for payment data for the processing of the electronic transaction through the application;
generating the at least two token processor networks via the application, wherein the list prioritizes a digital token of the at least two digital tokens that corresponds to the first token processor network based on [[the]] a preference for a user of a first token processor network for the processing of the electronic transaction, and wherein the list identifies at least the digital token pre-issued to the user device system via a token processor associated with at least the first token processor network;
transmitting, responsive to the request for the payment data via the short- range wireless communications, the list to the POS device;
in response to being selected by the POS device based on a supported functionality of the POS device and the preference,
providing a file locator for a token record associated with the digital token to the POS device; [[and]]
determining a private key usable to encrypt one or more application cryptograms that enable validating and transmitting the digital token over one or more of the at least two token processor networks; and
generating an application cryptogram of the one or more application cryptograms for the processing of the electronic transaction by the POS based on the digital token [[and]] the electronic transaction, and the private key.
2A, Prong One,
Taking the broadest reasonable interpretation, the invention is directed to a method of organizing human activity that is a fundamental economic practice of payment transaction processing, wherein the data is evaluated based on pre-defined instructions.
This allows users to manage and utilize multiple digital token formats and ensures data processing occurs even when preferred networks or token schemas are incompatible with merchant hardware, thereby integrating previously incompatible data formats, components, and networks (see App. Spec. para. 0027).
2A Prong Two
Beyond the abstract idea, the additional elements recite hardware components such as a computing device, processor and POS there does not appear to be any technology being improved.
They are described at a high level of generality where each step does no more than require a generic computer to perform generic computer functions. Absent is any support in the specification that the claims as recited require specialized computer hardware or other inventive computer components.
Although the claims recite
wherein the SDK enables the application to be configured to utilize a plurality of digital tokens with different POS devices to process electronic transactions, and wherein each of the plurality of digital tokens can be sued by a separate token processor network of at least two token processor networks:
receiving, via the short-range wireless communications, a request for payment data for the processing of the electronic transaction through the application;
generating the at least two token processor networks via the application, wherein the list prioritizes a digital token of the at least two digital tokens that corresponds to the first token processor network based on [[the]] a preference for a user of a first token processor network for the processing of the electronic transaction, and wherein the list identifies at least the digital token pre-issued to the user device system via a token processor associated with at least the first token processor network;
transmitting, responsive to the request for the payment data via the short- range wireless communications, the list to the POS device;
in response to being selected by the POS device based on a supported functionality of the POS device and the preference,
providing a file locator for a token record associated with the digital token to the POS device; [[and]]
determining a private key usable to encrypt one or more application cryptograms that enable validating and transmitting the digital token over one or more of the at least two token processor networks; and
This suggests exchange of data using tokens in electronic transaction processing. However, unlike, McRO, the present claims contain improvements to the context in which transactions are executed and not one of a technology or technological field.
These suggest outlining the specifics of the data used in the evaluation and the conditions for the output, absent is any support for the claims as recited for how it is an improvement to the computer or technical field beyond automating the evaluation process.
In particular, there is a lack of improvement to a computer or technical field of accessing the user’s data because the data processing performed merely uses a system as a tool to perform an abstract idea- see MPEP 2106.05(f). Therefore, the claims are directed to an abstract idea. The invention as claimed recites a generic computer component and the claim does not pass step 2A, Prong Two.
Step 2B;
The next step is to identify any additional limitations beyond the judicial exception. The additional elements are computer device which is disclosed in the specification at a high degree of generality. Absent is any genuine issue of material fact that this component requires any specialized hardware or inventive computer component.
Likewise, the dependent claims 2-10, 12-17 and 19-20 provide additonal details about the different steps and how the predefined rules are applied to the evaluation process. For example, claims 2-7 which provide additional details of the elements that are factored into the processing and the resulting output and define the instructions to perform the evaluation and do not address the issues raised in the independent claims and therefore do not amount to a technical improvement or an integration of a practical application.
In conclusion, merely “applying” the exception using generic computer components cannot provide an inventive concept. Therefore, the claims 1-20 are not patent eligible under 35 USC 101.
Independent claims 1, 11 and 18 are rejected under 35 U.S.C. § 101 including dependent claims 2-10 and 12-17 and 19-20 which fall with claims 1-20. Therefore, claims 1-20 are not patent eligible under 35 USC 101.
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 a judicial exception (abstract idea) without significantly more.
The claim recites abstract idea of organizing human activities. This judicial exception is not integrated into a practical application and the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Analysis
The claims are directed to one or more of the following statutory categories: a process, a machine, a manufacture, and a composition of matter.
Claim 11 which is illustrative of the independent claims including 1 and 18 recites:
claim 11 recites
11. A user device system comprising: a non-transitory memory; and one or more hardware processors coupled to the non-transitory memory and configured to read instructions from the non-transitory memory to cause the user device system to perform operations comprising:
transmitting, via short-range wireless communications, using a protocol from a software development kit (SDK) for an application on the user device system,
an indication to perform a processing of an electronic transaction by the
wherein the SDK enables the application to be configured to utilize a plurality of digital tokens with different POS devices to process electronic transactions, and wherein each of the plurality of digital tokens can be sued by a separate token processor network of at least two token processor networks:
receiving, via the short-range wireless communications, a request for payment data for the processing of the electronic transaction through the application;
generating the at least two token processor networks via the application, wherein the list prioritizes a digital token of the at least two digital tokens that corresponds to the first token processor network based on [[the]] a preference for a user of a first token processor network for the processing of the electronic transaction, and wherein the list identifies at least the digital token pre-issued to the user device system via a token processor associated with at least the first token processor network;
transmitting, responsive to the request for the payment data via the short- range wireless communications, the list to the POS device;
in response to being selected by the POS device based on a supported functionality of the POS device and the preference,
providing a file locator for a token record associated with the digital token to the POS device; [[and]]
determining a private key usable to encrypt one or more application cryptograms that enable validating and transmitting the digital token over one or more of the at least two token processor networks; and
generating an application cryptogram of the one or more application cryptograms for the processing of the electronic transaction by the POS based on the digital token [[and]] the electronic transaction, and the private key.
Taking the broadest reasonable interpretation, the invention (as recited in claims 1-20) is directed towards an abstract idea of payment transaction processing based on pre-defined rules (see App. Spec. para. 0002).
It can also be considered a mental process practically with the human mind since it entails making comparisons of data albeit with the help of a computer. Besides reciting the abstract idea, the remaining claim limitations recite generic computer components (e.g. processor; see App. specification, paras. 0029-0038).
This recited abstract idea is not integrated into a practical application. In particular, the claim only recites generic computer components to execute the steps.
The additional elements are recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception using generic computer components. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, the claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements - (e.g. processor) amount to no more than mere instructions to apply the abstract idea using generic computer components.
Dependent claims 2-10, 12-17 and 19-20 provide additonal details about the different step and how the predefined rules are applied to the evaluation process. For example, claims 12-17 describe additional details about the data tied to the tokens and the generated output and do not address the issues raised in the independent claims and therefore do not amount to a technical improvement or an integration of a practical application.
In conclusion, merely “applying” the exception using generic computer components cannot provide an inventive concept. Therefore, the claims 1-20 are not patent eligible under 35 USC 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Listed on form PTO-892.
Yam et. al, USP Pub. No 20070283161, System And Method For Generating Verifiable Device User Passwords.
Eustler, USP. Pub. No. 20240386489, Tokenized Asset Exchange
The references considered individually or in combination do not appear to show the specific combination of limitations of the claimed invention for the specific details of separate data structures and the linking thereof as particularly claimed in the instant invention.
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 CHIKA OJIAKU whose telephone number is (571)270-3608. The examiner can normally be reached Monday - Friday: 8.30 AM -5:00 PM EST.
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/CHIKAODINAKA OJIAKU/Primary Examiner, Art Unit 3696
1 Interval Licensing, 896 F.3d at 1344–45 (concluding that ‘‘[s]tanding alone, the act of providing someone an additional set of information without disrupting the ongoing provision of an initial set of information is an abstract idea,’’ observing that the district court ‘‘pointed to the nontechnical human activity of passing a note to a person who is in the middle of a meeting or conversation as further illustrating the basic, longstanding practice that is the focus of the [patent ineligible] claimed invention.’’); Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 1385 (Fed. Cir. 2018) (finding the concept of ‘‘voting, verifying the vote, and submitting the vote for tabulation,’’ a ‘‘fundamental activity’’ that humans have performed for hundreds of years, to be an abstract idea);
In re Smith, 815F.3d 816, 818 (Fed. Cir. 2016) (concluding that ‘‘[a]pplicants’ claims, directed to rules for conducting a wagering game’’ are abstract).
14 If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir . 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016)(holding that computer-implemented method for ‘‘anonymous loan shopping’’ was an abstract idea because it could be ‘‘performed by humans without a computer’’); Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (‘‘Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.’’); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use of ‘‘computer’’ or ‘‘computer readable medium’’ does not make a claim otherwise directed to process that ‘‘can be performed in the human mind, or by a human using a pen and paper’’ patent eligible); id. at 1376 (distinguishing Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010), as directed to inventions that ‘‘could not, as a practical matter, be performed entirely in a human’s mind’’). Likewise, performance of a claim limitation using generic computer components does not necessarily preclude the claim limitation from being in the mathematical concepts grouping, Benson, 409 U.S.at 67, or the certain methods of organizing human activity grouping, Alice, 573 U.S. at 219–20 - – See Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019
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