DETAILED ACTION
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
This action is in reply to the remarks/arguments for Application 18/506,165 filed on 10 November 2023.
Claims 1-9 of Group I have been previously elected in the response.
Claims 10-20 of Group II have been previously withdrawn/canceled.
Claims 1-9 are currently pending and have been examined.
Information Disclosure Statement
The Information Disclosure Statement filed 1 August 2025 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
Response to Arguments
A. Claim Rejections - 35 U.S.C. § 101:
1. Applicant argues that the claims are patent-eligible at least because they integrate the judicial exception into a practical application under Prong Two of Step 2A.
The argument, however, is not persuasive. The judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional elements of the claim such as an “computing device”, “device antenna”, “device processors”, “graphical user interface”, “display”, represent the use of a computer/computer-related device as a tool to perform an abstract idea (“business administrative task”) and/or does no more than generally
At most it is noted that the invention is directed to the improvement of an abstract idea using technology rather than to the improvement to technology and/or the functioning of the computer itself. The "focus" of the claim as a whole is not "on the specific asserted improvement in computer capabilities." Enfish, 822 F.3d at 1336. Rather, the claim merely limits the abstract idea to a particular technological environment of transaction card processing which does not render the claim any less abstract. See id.; Alice, 573 U.S. at 223 (holding that attempting to limit the use of an abstract idea to a particular technological environment does not make a claim patent-eligible) ( quoting Bilski, 561 U.S. at 610-11); Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) ("[M]erely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claim[] any less abstract."); Ultramercial, 772 F.3d at 716 ("As we have held, the use of the Internet is not sufficient to save otherwise abstract claims from ineligibility under§ 101.").
There is no actual improvement made to the operations or physical structure of the additional elements claimed. There are no actual improvements to another technology or technical field, no improvements to the functioning of the computer itself, and there are no meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment evident in the claims.
The rejection is therefore maintained.
B. Claim Rejections - 35 U.S.C. § 103:
Claims 1-9 stand rejected under 35 U.S.C. 103 as being unpatentable over Coulter et al., US 2010/0312700 A1 (“Coulter”), in view of Yee et al., US 2025/0131231 A1 (“Yee”).
1. Applicant submits that the Yee reference (US 2025/0131231) is not prior art as the disclosure was owned by the same entity (Capital One Services, LLC) as the present application before the effective filing data of the present application.
Examiner respectfully agrees. Accordingly the Yee reference is withdrawn. The Office, hwoever, has given consideration to the remarks and amendments made to the pending set of claims, but are considered moot in light of the grounds of rejection, provided below, for the current listing of claims.
C. Rejoinder of Claims 10-20:
1. Applicant argues/requests that previously withdrawn claims 10-20 be rejoined and allowed by virtue of their amended dependencies on claim 1.
The argument/request, however, is unpersuasive, inasmuch as previously elected claim 1 has not yet been allowed.
In order to be eligible for rejoinder, a claim to a nonelected invention must depend from or otherwise require all the limitations of an allowable claim. A withdrawn claim that does not require all the limitations of an allowable claim will not be rejoined. Furthermore, where restriction was required between a product and a process of making and/or using the product, and the product invention was elected and subsequently found allowable, all claims to a nonelected process invention must depend from or otherwise require all the limitations of an allowable claim for the claims directed to that process invention to be eligible for rejoinder. See MPEP § 821.04(b). In (s821.html#d0e109471).
Accordingly, the request to rejoin previously withdrawn claims 10-20 is disallowed.
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 1-9 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, claim 1 is directed towards facilitating authorization conditions (e.g., locking/unlocking) for the use of a transaction card. Claim 1 is directed to the abstract idea of merely following rules and instructions to perform an commercial and/or economic practice comprising the field-of-use steps of receiving (“card activation code”), initializing, transmitting (“initialization instructions”, “indication that the card is activated”), inputting, and presenting (“displaying”) data/information associated with a financial-related transaction, which is grouped under the certain methods of organizing human activity – fundamental economic principles, practices or concepts; sales activity; following set of instructions; commercial or legal interactions (marketing; sales activities or behaviors; business relations); managing personal behavior of relationships or interactions between people (including social activities, teachings, following rules or instructions) grouping, in prong one of step 2A.
Claim 1 recites: “a transaction card in a default locked state unable to conduct transactions;
a computing device comprising:
at least one device antenna to communicate directly with the transaction card;
one or more device processors;
device memory in communication with the one or more device processors and storing instructions that are configured to cause the computing device to:
receive or generate a card activation code;
initialize the transaction card by transmitting initialization instructions comprising using the at least one device antenna, the initialization instructions configuring one or more locking conditions of the card;
generate a graphical user interface indicating to a user that the transaction card is activated;
display the graphical user interface on a display of computing device;
receive a first input to change the transaction card to an unlocked state;
responsive to receiving the first input:
transmit, to the transaction card via the at least one device antenna, a first signal to change the transaction card from the default locked state to the unlocked state;
generate an updated graphical user interface indicating to the user that the transaction card is unlocked; and
display the updated graphical user interface on the display”.
Based on the underlined elements above, abstract ideas and/or concepts are identified.
Accordingly, the claim recites an abstract idea. Hence, claim 1 is not patent eligible.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A, the additional elements of the claim such as an “computing device”, “device antenna”, “device processors”, “graphical user interface”, “display”, represent the use of a computer/computer-related device as a tool to perform an abstract idea (“business administrative task”) and/or does no more than generally apply the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. automate) implement the acts of merely following rules and instructions to perform an commercial and/or economic practice comprising the field-of-use steps of receiving (“card activation code”), initializing, transmitting (“initialization instructions”, “indication that the card is activated”), inputting, and presenting (“displaying”) data/information associated with a financial-related transaction.
When analyzed under step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claims merely describe the concept of merely following rules and instructions to perform an commercial and/or economic practice comprising the field-of-use steps of receiving (“card activation code”), initializing, transmitting (“initialization instructions”, “indication that the card is activated”), inputting, and presenting (“displaying”) data/information associated with a financial-related transaction, using computer computer-related technology and/or devices that merely perform as designed to function. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Dependent claims 2-9 add further details and contain limitations that narrow the s-cope of the invention. However, these details do not result in significantly more than the abstract idea itself. As explained in the December 16, 2014 Interim Eligibility Guidance from the USPTO (in reference to the BuySAFE, Inc. v. Google, Inc. decision), further narrowing the details of an abstract idea does not change the § 101 analysis since a more narrow abstract idea does not make it any less abstract.
Viewed individually and in combination, these additional elements do not provide meaningful limitations to transform the abstract idea such that the claims amount to significantly more than the abstraction itself.
Accordingly, the present pending claims are not patent eligible and are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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 of this title, 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 are rejected under 35 U.S.C. 103 as being unpatentable over Coulter et al., US 2010/0312700 A1 (“Coulter”), in view of Cook et al., US 11,551,200 B1 (“Cook”).
Re Claim 1: (Currently Amended) Coulter discloses a system comprising:
a transaction card in a default locked state unable to conduct transactions; (¶[0028] “intermediary service may also provide functionality to enable a customer to selectively change the status of an account by activating or deactivating the account”; ¶[0091] “customer communication module 420 receives account setup and configuration information and enables the customer 422 to selectively change account status)
a computing device comprising: (¶[0053] “processor(s) 302 may include central processing units (CPUs) of the server 300 and, thus, control the overall operation of the server 300 by executing software or firmware”)
Regarding the limitation feature comprising:
at least one device antenna to communicate directly with the transaction card;
Cook, however, makes this teaching in a related endeavor (C4 L57-62: "contactless card" (also
referred to as a "smart card") is a physical transaction card (e.g., formed of plastic, metal, a combination thereof, etc.) comprising an integrated circuit with a wireless transmission antenna that allows the card to wirelessly transmit information to a contactless receiver”). It would have been obvious to one of ordinary skill in the art at the time of the invention to incorporate the teachings of Cook to the invention of Coulter as described above for the motivation of card activation in a convenient and effective manner.
Coulter further discloses:
one or more device processors; (¶[0053] “processor(s) 302 may include central processing units (CPUs) of the server 300 and, thus, control the overall operation of the server 300 by executing software or firmware”)
device memory in communication with the one or more device processors and storing instructions that are configured to cause the computing device to: (¶[0054] “software or firmware executed by the processor(s) maybe stored in a storage area 310 and/or in memory 304”)
receive or generate a card activation code; (¶[0039] “transaction notification message may also request the customer 102 to provide information to continue the transaction, such as to provide a transaction confirmation, a customer-specific, token-specific, or payment instrument specific) verification code”)
Regarding the limitation feature(s) comprising:
initialize the transaction card by transmitting initialization instructions comprising the card activation code from the computing device directly to the transaction card using the at least one device antenna, the initialization instructions configuring one or more locking conditions of the card;
generate a graphical user interface indicating to a user that the transaction card is activated;
display the graphical user interface on a display of computing device;
receive a first input to change the transaction card to an unlocked state;
responsive to receiving the first input:
transmit, to the transaction card via the at least one device antenna, a first signal to change the transaction card from the default locked state to the unlocked state;
generate an updated graphical user interface indicating to the user that the transaction card is unlocked;
display the updated graphical user interface on the display.
Cook, however, makes this teaching in a related endeavor (C4 L57-67, C5 L1-2: "contactless card" (also referred to as a "smart card") is a physical transaction card (e.g., formed of plastic, metal, a combination thereof, etc.) comprising an integrated circuit with a wireless transmission antenna that allows the card to wirelessly transmit information to a contactless receiver … The wireless transmission may be a radio field transmission and, particularly, is a near-field communication (NFC). When used in a payment transaction, the information transmitted may relate to an account associated with the contactless card ( e.g., a payment account number such as a credit card account number)”; C13 L15-19: “the provider institution computing system 108 may send instructions to the customer device 102 that cause the customer device 102 to display a prompt for additional authentication information”; C2 L65-67: “wherein the display includes an indication of an activation of the transaction card”; C24 L40-42: “At a process 820, the customer device 102 receives the authentication information as an input on the device”). It would have been obvious to one of ordinary skill in the art at the time of the invention to incorporate the teachings of Cook to the invention of Coulter as described above for the motivation of card activation in a convenient and effective manner.
Re Claim 2: (Currently Amended) Coulter in view of Cook discloses the system of claim 1. Regarding the limitation feature comprising:
wherein initializing the transaction card does not require internet access.
Cook, however, makes this teaching in a related endeavor (C4 L57-67, C5 L1-2: "contactless card" (also referred to as a "smart card") is a physical transaction card (e.g., formed of plastic, metal, a combination thereof, etc.) comprising an integrated circuit with a wireless transmission antenna that allows the card to wirelessly transmit information to a contactless receiver … The wireless transmission may be a radio field transmission and, particularly, is a near-field communication (NFC). When used in a payment transaction, the information transmitted may relate to an account associated with the contactless card ( e.g., a payment account number such as a credit card account number”; C19 L15-19: “customer 15 device 102 receives the tag 193 as a result of the NFC tap and may transmit the tag 193 (e.g., and associated data) to the card issuer computing system 108”). It would have been obvious to one of ordinary skill in the art at the time of the invention to incorporate the teachings of Cook to the invention of Coulter as described above for the motivation of card activation in a convenient and effective manner.
Re Claim 3: (Currently Amended) Coulter in view of Cook discloses the system of claim 1. Coulter further discloses:
wherein the card activation code is associated with a specific user account of a mobile application on the computing device. (¶[0038] “acquirer is able to route the initial authorization request to the intermediary service 204 because the identifying information transmitted in the authorization request identifies the initial authorization request as being associated with a customer 102 having an account with the intermediary service 204”)
Re Claim 4: (Currently Amended) Coulter in view of Cook discloses the system of claim 1. Regarding the limitation feature(s) comprising:
wherein the device memory stores further instructions that are configured to cause the computing device to:
generate a second graphical user interface giving the user an option to change the state of the transaction card to the default locked state;
display the second graphical user interface on the display;
receive a second signal to change the transaction card to the default locked state; and
transmit, to the transaction card, a lock authorization to change the card from the unlocked state to the default locked state.
Cook, however, makes this teaching in a related endeavor (C4 L57-67, C5 L1-2: "contactless card" (also referred to as a "smart card") is a physical transaction card (e.g., formed of plastic, metal, a combination thereof, etc.) comprising an integrated circuit with a wireless transmission antenna that allows the card to wirelessly transmit information to a contactless receiver … The wireless transmission may be a radio field transmission and, particularly, is a near-field communication (NFC). When used in a payment transaction, the information transmitted may relate to an account associated with the contactless card ( e.g., a payment account number such as a credit card account number)”; C13 L15-19: “the provider institution computing system 108 may send instructions to the customer device 102 that cause the customer device 102 to display a prompt for additional authentication information”; C2 L65-67: “wherein the display includes an indication of an activation of the transaction card”; C24 L40-42: “At a process 820, the customer device 102 receives the authentication information as an input on the device”). It would have been obvious to one of ordinary skill in the art at the time of the invention to incorporate the teachings of Cook to the invention of Coulter as described above for the motivation of card activation in a convenient and effective manner.
Re Claim 5: (Currently Amended) Coulter in view of Cook discloses the system of claim 1. Coulter further discloses:
wherein a mobile application pairs a second device with the transaction card, and the second device has permissions to change the transaction card from the default locked state to the unlocked state and set the one or more locking conditions. (¶[0061] “service may allow a customer to create sub-accounts associated with a master account (e.g., a parent creating an account for a child). The customer is then allowed to define an additional set of rules to apply to one or more of the created sub-accounts”; ¶[0085] “the "selecting a mobile device" action allows a customer to specify that multiple notifications should be sent for some transactions ( e.g., a message to a first device requesting approval and a message to a second device containing transaction information but not requesting approval). As another example, a parent who has established a sub-account for a child could specify a rule that notifications for low-value transactions are sent to the child's mobile device, while notifications for higher-value transactions are sent to the parent's mobile device”)
Re Claim 6: (Currently Amended) Coulter in view of Cook discloses the system of claim 1. Coulter further discloses:
wherein the device memory stores further instructions that are configured to cause the computing device to:
generate a third graphical user interface for receiving a selection of an account used by the transaction card from the user;
display the third graphical user interface on the display;
receive the selection of the account via the third graphical user interface;
transmit the selection of the account to the transaction card.
(¶[0050] “At a step 6a, a request is made to the secure storage provider 208 for account information associated with the customer's selected payment instrument. At a step 6b, the secure storage provider responds with the account information. The intermediary service 204 then provides the account information to the acquirer 108”; ¶[0055] “intermediary service 204 also requests account information from the issuing institution 110 and provides the account information to the acquirer 108”)
Re Claim 7: (Currently Amended) Coulter in view of Cook discloses the system of claim 1. Coulter further discloses:
wherein the device memory stores further instructions that are configured to cause the computing device to:
generate a fourth graphical user interface for changing the one or more locking conditions;
display the fourth graphical user interface on the display;
receive [[user]] second input indicating changes to the one or more locking conditions;
transmit one or more revised locking conditions to the transaction card.
(¶¶[0065-0085] “Examples of factors that may be considered when defining a condition include …”)
Re Claim 8: (Currently Amended) Coulter in view of Cook discloses the system of claim 7. Coulter further discloses:
wherein the one or more locking conditions comprise an unlock time period, a location-based unlock area, a unlock distance from computing device, an unpairing of the transaction card from the computer device, and an authorization of a transaction via the transaction card.
(¶¶[0065-0085] “Examples of factors that may be considered when defining a condition include …”)
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Coulter et al., US 2010/0312700 A1 (“Coulter”), in view of Cook et al., US 11,551,200 B1 (“Cook”), as applied to claims 1-8 described above, further in view of Albero et al., US 2024/0028678 A1 (“Albero”).
Re Claim 9: (Currently Amended) Coulter in view of Cook discloses the
wherein the device memory stores further instructions that are configured to cause the computing device to: dynamically change the one or more locking conditions using a machine learning model trained from a routine of the user.
Albero, however, makes this teaching in a related endeavor (FIG. 6: “Generate, based on the first user operation metrics, a machine learning model” 610; FIG. 7: “Use machine learning model that is trained based on data set for the user associated with the transaction” 720; ¶[0052] “authentication engine 170-1 may have instructions for generating a machine learning model of data. If the authentication platform 110 is for validating card-based payment transactions for online purchases being made via the user device 140, the machine learning model may be based on metrics relating to operation of the user device 140, or a purchase history of a user. If the authentication platform 110 is for controlling user access to a physical location, the machine learning model may relate to usage of an access card … machine learning model may be based on metrics relating to operation of the user device 140. The authentication engine 170-1 may further have instructions to authenticate, using the
generated machine learning model, data as received from the sensors 145 and/or the user device 140. The database may be used to store data for generating a machine learning model of data to be authenticated. For example, the data may comprise historical data as received …”). It would have been obvious to one of ordinary skill in the art at the time of the invention to incorporate the teachings of Albero to the invention of Coulter as described above for the motivation of providing effective, efficient, scalable, and convenient technical solutions that for user authentication.
Conclusion
The prior arts made of record and not relied upon are considered pertinent to applicant's disclosure:
Sorbello (US 2020/0151721 A1) discloses systems and methods for mobile pre-authorization of a credit transaction. A method for pre-authorizing a credit transaction may include receiving a pre-authorization request including a request identifier, a user identifier, a pre-authorization amount, a time duration identifier, and a vendor identifier, transmitting the pre-authorization request to a server remote from the user device, receiving a pre-authorization confirmation including the request identifier, a confirmation identifier, and a time duration identifier, and displaying a confirmation message that the pre-authorization request has been approved. A user device configured to pre-authorize a credit transaction may include a processor, a display in communication with the processor, a wireless transceiver in communication with the processor and a non-transitory memory storing instructions that, when executed by the processor, cause the processor to perform processing including receiving a pre-authorization request, transmitting the
pre-authorization request to a server remote from the user device, receiving a pre-authorization confirmation, and displaying a confirmation message that the pre-authorization request has been approved.
Hammad et al. (US 2009/0187492 A1) discloses LOCATION BASED AUTHENTICATION. In Hammad, a portable consumer device that is used to conduct a transaction at a merchant is authenticated. Information provided to a server computer includes locations of a merchant and a
mobile communication device possessed by a consumer. If the location of the mobile communication device corresponds to the location of the merchant, the portable consumer device that is used to conduct the transaction is authenticated.
Claims 1-9 are rejected.
Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Clifford Madamba whose telephone number is 571-270-1239. The examiner can normally be reached on Mon-Thu 7:30-5:00 EST Alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan Donlon, can be reached at 571-272-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CLIFFORD B MADAMBA/Primary Examiner, Art Unit 3692
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