DETAILED ACTION
Status of Claims
1. This office action is in response to RCE filed 12/16/2025.
2. Claims 1-17 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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Japanese Patent Application No. 2022-185475, filed on Nov. 21, 2022.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/16/2025 has been entered.
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 1-17
Claims 1-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: Claims 1-17 are directed to a server (system); claim 15 is are directed to method; claims 16, 17 are directed to a non-statutory storage medium – each of which is one of the statutory categories of inventions.
Step 2A: A claim is eligible at revised Step 2A unless it recites a judicial exception and the exception is not integrated into a practical application of the application.
Prong 1: Prong One of Step 2A evaluates whether the claim recites a judicial exception (an abstract idea enumerated in the 2019 PEG, a law of nature, or a natural phenomenon).
Groupings of Abstract Ideas:
I. MATHEMATICAL CONCEPTS
A. Mathematical Relationships
B. Mathematical Formulas or Equations
C. Mathematical Calculations
II. CERTAIN METHODS OF ORGANIZING HUMAN ACTIVITY
A. Fundamental Economic Practices or Principles (including hedging, insurance, mitigating risk)
B. Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)
C. Managing Personal Behavior or Relationships or Interactions between People (including social activities, teaching, and following rules or instructions)
III. MENTAL PROCESSES.
Concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
See MPEP 2106.04 (a) (2) Abstract Idea Groupings [R-10.2019]
Independent claim 1, 15, and 16 recite the limitations – receive shop terminal settlement request; generate authentication information based on user key, identifier and time information; calculate a predetermined number of consecutive pieces of past time information at predetermined time intervals from reception time based on the settlement request; generate a plurality of pieces of authentication information, based on the key information and the time information corresponding to the reception time and the predetermined number of pieces of past time information, wherein the authentication information is generated based on the same key information without updating the key information between settlements; determine a verification result whether the authentication information received from the shop terminal is included in the plurality of pieces of authentication information generated; and perform settlement processing for the user based on the verification result of the plurality of pieces of authentication information and authentication information received from the shop terminal – that constitutes Fundamental Economic Practices or Principles and/or Commercial/Legal Interactions and hence fall under the abstract idea category Certain Methods of Organizing Human Activity.
Claim 17 recites – receiving key information; generating authentication information based on key information, and time information; calculating a predetermined number of consecutive pieces of past time information at predetermined time intervals from reception time based on the settlement request; generate a plurality of pieces of authentication information, based on the key information and the time information corresponding to the reception time and the predetermined number of pieces of past time information, wherein the authentication information is generated based on the same key information without updating the key information between settlements; displaying barcode information indication computer offline mode – that also constitutes Fundamental Economic Practices or Principles and/or Commercial/Legal Interactions and hence fall under the abstract idea category Certain Methods of Organizing Human Activity.
See Universal Secure Registry LLC v. Apple Inc., 10 F.4th 1342, 1353 (Fed. Cir. 2021) (“verifying the identity of a user to facilitate a transaction is a fundamental economic practice that has been performed at the point of sale well before the use of POS computers and Internet transactions”).
The dependent claims further limit the abstract idea to – character string indicating authentication information; not perform settlement when it exceeds upper limit; lower the settlement upper limit based on longer time between when key is sent and settlement request is received; change upper-limit based on fraud risk; evaluate fraud risk based on date, time and location; generate authentication based on past time information at preterminal intervals – that also constitute Certain Methods of Organizing Human Activity.
Hence under Prong One of Step 2A, claims 1-17 recite a judicial exception.
Prong 2: Prong Two of Step 2A evaluates whether the claim recites additional elements that integrate the judicial exception into a practical application of the exception.
Limitations that are indicative of integration into a practical application include:
Improvements to the functioning of a computer or to any other technology or technical field – see MPEP 2106.05(a)
Applying the judicial exception with, or by use of, a particular machine – see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing – see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception – see MPEP 2106.05(e)
Limitations that are not indicative of integration into a practical application include:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea – see MPEP 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception – see MPEP 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Additional elements recited by the claims, beyond the abstract idea, include: a settlement server comprising a memory and processor; user terminal; shop terminal; code image with user ID embedded therein; barcode; and computer readable non-transitory storage medium.
When determining whether a claim simply recites a judicial exception with the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer, the MPEP suggests the following consideration:
MPEP 2106.05(f) Mere Instructions To Apply An Exception [R-10.2019]:
(1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words “apply it”. See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). In contrast, claiming a particular solution to a problem or a particular way to achieve a desired outcome may integrate the judicial exception into a practical application or provide significantly more. See Electric Power, 830 F.3d at 1356, 119 USPQ2d at 1743.
By way of example, in Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described “the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’” 850 F.3d at 1339-40; 121 USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of "collecting, displaying, and manipulating data." 850 F.3d at 1340; 121 USPQ2d at 1946. In addition to the abstract idea, the claims also recited the additional element of modifying the underlying XML document in response to modifications made in the dynamic document. 850 F.3d at 1342; 121 USPQ2d at 1947-48. Although the claims purported to modify the underlying XML document in response to modifications made in the dynamic document, nothing in the claims indicated what specific steps were undertaken other than merely using the abstract idea in the context of XML documents. The court thus held the claims ineligible, because the additional limitations provided only a result-oriented solution and lacked details as to how the computer performed the modifications, which was equivalent to the words “apply it”. 850 F.3d at 1341-42; 121 USPQ2d at 1947-48 (citing Electric Power Group., 830 F.3d at 1356, 1356, USPQ2d at 1743-44 (cautioning against claims “so result focused, so functional, as to effectively cover any solution to an identified problem”)).
Here, Examiner finds that the independent claim limitations – “control, based on the user terminal being offline, to generate authentication information based on user key, identifier and time information,” “generate a plurality of pieces of authentication information, based on the key information and the time information corresponding to the reception time and the predetermined number of pieces of past time information, wherein the authentication information is generated based on the same key information without updating the key information between settlements;” and “determine a verification result whether the authentication information received from the shop terminal is included in the plurality of pieces of authentication information generated” – have been expressed purely in terms of results, devoid of implementation details.
Each of the limitations – “control … to generate,” “generate … based on key information and time information … without updating the key information between settlements” and “determine a verification result” – has been expressed functionally.
All purported inventive concepts reside in – how the user terminal is controlled to generate the authentication information, how the authentication information is generated based on key and time information without updating key information between settlements, and how the verification result is determined.
See also Two-Way Media Ltd. v. Comcast Cable Commc’n, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017) (“The claim [before the court] requires the functional results of ‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating records,’ but does not sufficiently describe how to achieve these results in a non-abstract way.”); see Intellectual. Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (“Indeed, the claim language here provides only a result-oriented solution, with insufficient detail for how a computer accomplishes it. Our law demands more.”); see Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016) (“At that level of generality, the claims do no more than describe a desired function or outcome, without providing any limiting detail that confines the claim to a particular solution to an identified problem. The purely functional nature of the claim confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea.”); see Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x 950, 952-53, 954-56 (Fed. Cir. 2018) (non-precedential) (“Instead of focusing on the technical implementation details of the zooming functionality, for example, claim 1 recites nothing more than the result of the zoom.”).
Examiner thus finds that any additional element(s), beyond the judicial exception, has been recited at a high level of generality such that the claim limitations amount to no more than mere instructions to apply the exception using generic components (see MPEP 2106.05(f)) or insignificant data gathering activities (see MPEP 2106.05(g)).
An ordered combination of the limitations – transmit, receive, control, calculate, generate, display, input, generate, determine, perform – does not purport to improve the functioning of a computer or effect an improvement in any other technology or technical field. Instead, the additional elements do no more than “use the computer as a tool” and/or “link the use of the judicial exception to a particular technological environment or field of use.” The focus of the claims is not on improvement in computers, but on certain independently abstract ideas – receive shop terminal settlement request; generate authentication information based on user key, identifier and time information; calculate a predetermined number of consecutive pieces of past time information at predetermined time intervals from reception time based on the settlement request; generate a plurality of pieces of authentication information, based on the key information and the time information corresponding to the reception time and the predetermined number of pieces of past time information, wherein the authentication information is generated based on the same key information without updating the key information between settlements; determine a verification result whether the authentication information received from the shop terminal is included in the plurality of pieces of authentication information generated; and perform settlement processing for the user based on the verification result of the plurality of pieces of authentication information and authentication information received from the shop terminal – that merely uses generic computers as tools. Steps that do no more than spell out what it means to “apply it on a computer” cannot confer patent eligibility. Indeed, nothing in claim 1 improves the functioning of the computer, makes it operate more efficiently, or solves any technological problem. See Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384-85 (Fed. Cir. 2019).
Hence, the additional elements, when considered individually or in combination, do not integrate the judicial exception into a practical application.
Hence, the claims are ineligible under Step 2A.
Step 2B: In Step 2B, the evaluation consists of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception.
As discussed in Prong Two, the additional elements in the claims amount to no more than mere instructions to apply the exception using generic components, which is insufficient to provide an inventive concept.
When considered individually or as an ordered combination, the additional elements fail to transform the abstract idea of – receive shop terminal settlement request; generate authentication information based on user key, identifier and time information; calculate a predetermined number of consecutive pieces of past time information at predetermined time intervals from reception time based on the settlement request; input the key information and the time information corresponding to the reception time and the predetermined number of pieces of past time information into a predetermined algorithm to generate a plurality of pieces of authentication information; determine a verification result whether the authentication information received from the shop terminal is included in the plurality of pieces of authentication information generated; and perform settlement processing for the user based on the verification result of the plurality of pieces of authentication information and authentication information received from the shop terminal – into significantly more.
See MPEP 2106.05(f) Mere Instructions To Apply An Exception [R-10.2019].
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.
Hence, the claims are ineligible under Step 2B.
Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to a judicial exception without significantly more.
Response to Arguments
Applicant's arguments filed 11/14/2025 have been fully considered but they are not persuasive.
101
Applicant argues, citing para [0040] of the published application, that the claimed limitation “wherein the authentication information is generated based on the same key information without updating the key information between settlements,” provides technical improvement over conventional methods that provide key updates.
Para [0040] (“In this embodiment, key information is managed in association with users. Thus, the user terminal 30, when it is in offline state, may be configured to use the same key information to generate authentication information, regardless of at which shop the settlement is made. That is, the reception unit 102 may receive from each of the plurality of shop terminals 20 a settlement request including authentication information generated based on key information and predetermined time information, and the user ID of the user. At this time, the authentication information that the reception unit 102 receives from each of the plurality of shop terminals 20 may be generated based on the same key information. Repeatedly generating authentication information from the same key information reduces the communication load between the settlement server 10 and the user terminal 30 compared to the method of updating the key information every time the authentication information is generated. A method of updating key information every time authentication information is generated fails to update the key information while the user terminal 30 is offline. This means that once the key information is used up, the user terminal 30 is not able to make a settlement until it becomes online again. The present embodiment is configured to repeatedly generate authentication information from the same key information, so that the user terminal 30 is able to repeatedly make settlement even when its offline state continues.”)
Examiner finds this unpersuasive
First, under the broadest reasonable interpretation (BRI), only one transaction settlement is required to invoke the claims and thus the need for “repeatedly generating authentication information from the same key” does not arise and thus any assertion relating to reducing communication load is speculative at best.
Second, the reason for generating authentication information from the same key information is that the terminal is offline. As stated above in para [0040], (“A method of updating key information every time authentication information is generated fails to update the key information while the user terminal 30 is offline.”). In other words, the key information would not be used up and thus the claimed steps would not be necessary if the terminal were not offline because when the terminal is online, every transaction would require a new key. Generating every subsequent authentication information from the same key is no different from the first authentication generation request and thus cannot be called technical improvement. Moreover, generating subsequent authentication key from the first key information may even be potentially risky from a security point of view because unauthorized users might be able to reuse the same key information to carry out unapproved transactions while the terminal is offline – something they would not otherwise be able to do if they were required to generate a new key for every transaction when the terminal is online.
Applicant also argues that amended claim 1 recites an improvement to logical structures and processes similar to Ex parte Desjardins.
Examiner finds this unpersuasive because
The claims of Ex parte Desjardins were directed to a method of training a machine learning model by training a plurality of models on a first training data, determining the measure of importance of the parameters to a first machine learning task by computing an approximation of a posterior distribution, assigning a value to each of the parameters, obtaining a second training data on a second different machine learning task, training the machine learning model on the second machine learning task. The Appeal Review Panel agreed with the Appellant that this training strategy allows the model to preserve performance on earlier tasks even as it learns new ones, directly addressing the technical problem of 'catastrophic forgetting' in continual learning systems. The Panel was persuaded that the claims constituted an improvement to how the machine learning model itself operates, and not, for example, the identified mathematical calculation.
However, the pending claims bear no similar to Ex parte Desjardins whatsoever. Applicant’s invention does not even purport to use a machine learning model, let alone a method of training a machine learning model to first and second machine learning tasks. Whereas, Ex parte Desjardins is directed to improving the training of machine learning models, Applicant’s invention is directed to carrying out a transaction when the terminal is offline which is a Certain Method of Organizing Human Activity.
For the above reasons, Applicant’s arguments are not found persuasive.
Previously Addressed
Applicant argues that the offline operation capability addresses a specific technical problem in electronic payment systems where network connectivity issues prevent standard online authentication protocols from operating; that the claimed invention does not merely automate existing payment processes but creates a new technical paradigm for secure authentication in disconnected network environments.
Examiner respectfully disagrees.
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As shown in Fig. 7, during offline state, the user terminal generates and displays authentication code. As per para [0067] – [0068], the shop terminal reads the multi-digital character string code displayed on the screen of the user terminal and sends it to the settlement server. Applicant cannot reasonably deny that a store clerk submitting a settlement request containing user ID to a settlement server is a Commercial/Legal Interaction. Whether the user authentication code originates from an online user terminal or offline user terminal does not change the analysis the claimed steps are carried out in the furtherance of a financial transaction. More importantly, offline state has been defined in para [0023] of the specification as a state in which the user terminal is not communicable with the settlement server. But the user terminal is not out of service and is able to generate authentication information based on key and time information and display that information on the screen of the user terminal. Since the user terminal can provide this crucial piece of information, even in this offline state, therefore, contrary to applicant’s assertion, this is not a technical problem which prevents standard online authentication protocols from operation. The fact that the user terminal is not communicable with the settlement server is not a problem at all because the shop terminal can read the authentication code displayed on the user terminal and forward it to the settlement server so that the transaction can be completed. If there was no network connectivity between the user terminal and the shop terminal then the claimed steps could not be performable because there would have no way for the user ID to reach the settlement server via the shop terminal. For the above reasons, Applicant’s assertion – that the present invention creates a new technical paradigm for secure authentication in disconnected network environments – is not persuasive.
As set forth above in Prong 2, the steps reciting – “generate authentication information based on the key information, and time information and display a code image with the authentication information and user ID embedded therein” “calculate a predetermined number of consecutive pieces of past time information at predetermined time intervals from reception time based on the settlement request” “input the key information and the time information corresponding to the reception time and the predetermined number of pieces of past time information into a predetermined algorithm to generate a plurality of pieces of authentication information” and “determine a verification result where the authentication information received from the shop terminal is included in the plurality of pieces of authentication information” – constitute Fundamental Economic Practices or Principles. See Universal Secure Registry LLC v. Apple Inc., 10 F.4th 1342, 1353 (Fed. Cir. 2021) (“verifying the identity of a user to facilitate a transaction is a fundamental economic practice that has been performed at the point of sale well before the use of POS computers and Internet transactions”);
Applicant argues that the specification explicitly describes using hash operations to create irreversible authentication information, demonstrating that the claimed algorithm provides cryptographic security rather than merely organizing commercial transactions.
Examiner finds this unpersuasive because claim 1 does not recite cryptographic algorithms. The predetermined algorithm has been generically recited. Para [0064] of the specification merely states that the function algorithm may include a hash function with no further exposition of the algorithm and what it does. Examiner notes that a hash function is a very basic and generic algorithm used in the industry to encrypt transaction data. The practice of encrypting electronic communications and financial transactions for privacy and security purposes has become widespread worldwide over the last two decades. Therefore, to assert that the algorithm provides cryptographic security is no longer persuasive.
Applicant asserts that the claims represent a specific technical solution to clock synchronization challenges when user terminals are offline for extended period, their internal clocks may drift creating authentication failures.
Examiner finds this unpersuasive because calculating consecutive pieces of past time information and inputting into an algorithm is part of the abstract idea and does not constitute technical improvement. The algorithm has been described as a generic black box without any details on how it generates pieces of authentication. Nor is it clear how and how the invention solves synchronization challenges because neither the specification or the claims mention discrepancies between clock times and how they might be synchronized. At most, the claims recite calculating predetermined pieces of past time information at select time intervals from reception time to settlement request and input this data into a predetermined algorithm. This is mere data processing for generating authentication information as opposed to solving synchronization challenges associated with offline terminals.
Applicant asserts that the amended claim solves this technical problem through distributed authentication architecture.
Examiner finds this unpersuasive because distributed computing has been around since the 1970s. See ARPANET, the precursor to the Internet. Modern distributed systems may consist of thousands of nodes within a network which is connected to the Internet. In the present case however, there are only three computers – shop terminal, user terminal, and settlement server as shown in Fig. 1. This is one of the most elementary forms of distributed architecture. Therefore, for the Applicant to assert that the present claims solve a technical problem using a distributed architecture is not persuasive.
The combination of additional elements does not bring about (i) an improvement to the functionality of a computer or other technology or technical field; (ii) a “particular machine” to apply or use the judicial exception; (iii) a particular transformation of an article to a different thing or state; or (iv) any other meaningful limitation. See MPEP 2106.05(a)-(c), (e)-(h). Hence, the additional elements fail to integrate the recited combination of abstract idea(s) into a practical application or provide significantly more. See MPEP 2106.05(f).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARUNAVA CHAKRAVARTI whose telephone number is (571)270-1646. The examiner can normally be reached 9 AM - 5 PM ET.
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/ARUNAVA CHAKRAVARTI/Primary Examiner, Art Unit 3692
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