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 Office Action is in response to the Application filed October 20, 2023. Claims 1-20 are pending in this case.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on January 7, 2025, and July 3, 2025, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because of excessive length. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Remarks
We find that portions of the claims are not positively recited, as below.
Regarding claim 1 –
Claim 1 should be amended/rewritten to include positive steps carried out by the security zone elements/modules. Additionally, the last method step “ the hashed PCH data . . . transaction” should be amended such that it is positively recited.
Regarding claim 11 –
Claim 11 should be amended to include a transitional phrase, as well as to define the structural elements of the claimed system. Additionally, the last limitation “ the hashed PCH data . . . transaction” should be amended such that it is positively recited.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Regarding claim 11 –
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
a dynamic smart contract (DSC) execution engine module for generating a DSC hash value in claim 11
a hyper-ledger fabric module for enabling dynamic parameters to be stored in claim 11
a metablock generator module for creating the PCH profile metablock and hashing PCH data in claim 11
an offline line services module for providing a one-time offline cryptographic token in claim 11
Regarding claim 11, the term “module” acts as a generic placeholder for the term “means”. Also, the generic placeholders are modified by functional language “generating”, “enabling”, “creating” and “providing”. Further, the generic placeholders are not modified by sufficient structure, material, or acts for performing the claimed function.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claims 12-20 are rejected under similar criteria as each depends from claim 11
Claim Rejections - 35 USC § 112
Claims 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1 –
Claim 1 recites the limitation "the network" in the second limitation. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-10 are rejected under similar criteria since each depends from claim 1.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 11-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 11 –
Claim 11 invokes 35 U.S.C. 112(f) interpretation (see Claim Interpretation section). A means- (or step-) plus-function limitation that is found to be indefinite under 35 U.S.C. 112(b) based on failure of the specification to disclose corresponding structure, material or acts that perform the entire claimed function also lacks adequate written description (see MPEP 2181(IV)). Claim 11 is found to be indefinite under 35 U.S.C. 112(b), therefore the claims are also rejected under 35 U.S.C. 112(a) for lacking adequate written description.
Claims 12-20 are also rejected as each depends from claim 11.
Claims 11-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 11 –
Claim 11 recites a system, but lacks a transitional phrase, making it unclear what elements make up the system It is therefore unclear whether the claimed “computing device” and the “security zone” are part of the claimed system or some other computing device. In other words, the system elements are unclear, as it is not clear from the claim, what the elements are that make up the system.
The claim is therefore rendered vague and unclear.
Claims 12-20 are rejected under similar criteria, as each depends from claim 11.
Regarding claim 11 –
Claim 11 recites the limitations “a dynamic smart contract (DSC) execution engine module for generating a DSC hash value that identifies the DSC for the payment card holder profile metablock; a hyper-ledger fabric module for enabling dynamic parameters to be stored as an asset in the dynamic smart contracts; a metablock generator module that creates the payment card holder profile metablock and hashes the payment card holder data in a subscribed hashing algorithm; and wherein the hashed payment card holder data includes private keys and cryptographic keys in a secured element section of the payment card holder profile metablock; and an offline line services module for providing a one-time offline cryptographic token per payment card holder metablock that is updated by a key exchange handshake with a metablock secure element”, invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. A review of the specification shows that the specification fails to clearly describe the corresponding structure, material or acts that perform the claimed function. Figures 2, 4, and 5 merely shows a metablock generator and smart contract execution engine, as well as various modules, (par 7), which are part of a blockchain (par 27 and 33), however, the actual corresponding structure for each of the modules is not clearly described.
To satisfy the definiteness requirement under 35 U.S.C. 112(b) or 35 U.S.C. 112, second paragraph, the written description must clearly disclose the corresponding structure, material or acts that perform the claimed function (See MPEP 2181(III)). For computer-implemented means-plus-function limitations, the corresponding structure includes both the computer and the algorithm that performs the recited functions. (See MPEP 2161). A review of the specification shows that the specification fails to clearly describe the corresponding structure, material or acts that perform the claimed function. Figures 2, 4, and 5 merely shows a metablock generator and smart contract execution engine, as well as various modules, (par 7), which are part of a blockchain (par 27 and 33), however, the actual corresponding structure for each of the modules is not clearly described.
Therefore, claim 11 is indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Dependent claims 12-20 depend upon claim 11 and are rejected for the same reasons.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 12-20 are rejected under similar criteria as each depends from claim 11.
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- 10 are directed to a method, while claims 11-20 are directed to a system. Therefore, the claims fall within the four statutory categories of invention.
The claims recite or describe a process of modifying the expiration date of a payment device (such as a credit card).
Specifically, the claim recites enabling a dynamic expiration date in a token, which is an abstract idea. The claims are grouped within the certain methods of organizing human activity grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 54 (January 7, 2019)) because they involve customizing a payment device by modifying an expiration date.
Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)).
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 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54-55 (January 7, 2019)), the additional elements of the claims such as the computing device, block chain, security zone and modules thereof, merely implement the abstract idea. Specifically, payment device and blockchain perform the steps or functions of modifying the expiration date of a payment device (such as a credit card). The use of a computing device, blockchain, security zone and modules thereof 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)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), 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 claims 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 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 56 (January 7, 2019)), the additional element(s) of using computing device, block chain, security zone and modules thereof to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of modifying an expiration date. As discussed above, taking the claim elements separately, the payment device and blockchain perform the steps or functions of modifying the expiration date of a payment device (such as a credit card). These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of customizing a payment device and approving a payment using the payment device.
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.
Dependent claims, 2-10 and 12-20 further describe the abstract idea of modifying an expiration date. 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 § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Jakobsson et al (US 2022/0407702).
Regarding claims 1 and 11 –
Jakobsson discloses method for enabling dynamic expiration dates in a payment card token (par 81, 181, 227, 228), the method comprising:
creating a private blockchain executing on a computing device and controlled by an inquiry block exchange. (par 81, 181, 227, 228))
generating a payment card holder (PCH) metablock when a first payment card issuer creates a first PCH profile (par 259, 296, also 104, 158-159, 104)
Note that, with respect to the “security zone on the network . . . ” (and its modules), this limitation does not have any patentable weight because the “security zone on the network” is not part of the method claimed and considered outside the scope. In other words the method of claim 1 is performed by the computing device (specification abs). The security zone network does not positively recite any of the steps and therefore considered outside the scope of the claim method.
Regarding claims 2-10 and 12-20 –
Note that, with respect to the “security zone on the network . . . ” (and its modules), this limitation does not have any patentable weight because the “security zone on the network” is not part of the method claimed and considered outside the scope. In other words the method of claim 1 is performed by the computing device (abs). The security zone network does not positively recite any of the steps and therefore considered outside the scope of the claim method.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/Cristina Owen Sherr/Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697