DETAILED ACTION
Acknowledgements
The amendment filed 11/26/2025 is acknowledged.
Claims 1-2 and 4-5 are pending.
Claims 1-2 and 4-5 have been examined.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/26/2025 has been entered.
Election/Restrictions
Applicant’s election without traverse of Group I, comprising claims 1-2, in the reply filed on 12/9/2024 is acknowledged.
Response to Amendment/Arguments
Regarding the rejection of the claims under 35 USC 101, applicant states that the claims constitute an improvement to computer functionality of the mobile device because they define a computing device connected to a mobile device, where the computing device computes data for a virtual card and sends the key value to the mobile device and receives a first payment authorization request with a candidate virtual PAN generated by the mobile device based on the key value. Applicant states this improves the computing functionality of the mobile device because it enables the mobile device to perform payment with different cards without requiring their storage in the mobile device’s secure element, such that the limited storage capacity of the storage capacity of the secure element does not limit the number of cards that can be used by the mobile device. Additionally, applicant also states that the claims constitute an improvement to another technology because the claims eliminate the need for sensitive funding card data to pass through the merchant by sending a key to the mobile device instead of a card number, thereby improving the security of communications with third-party systems, and because the claims reduce the need for relying the mobile device’s secure element by providing security by the computer device which computes a virtual card PAN and key value and validates a candidate virtual card PAN so that virtual card data does not need to be stored at the mobile device. Additionally, applicant states that by not requiring the mobile device’s secure element, the claimed invention eliminates the need for any pre-existing cooperation and/or infrastructure between mobile devices/network carriers and third parties.
Examiner notes first that claims are not directed to the mobile device, but rather to a computing device connected to the mobile device. Thus, the claims cannot provide an improvement to the functionality of the mobile device, as they are not directed to any functionality performed by the mobile device. The described potential improvements that are achieved by not requiring that the mobile device store certain data or not requiring that the mobile device use a secure element are not features required by the present claims, as they describe functionality performed on the mobile device which is outside the scope of the present claims. The claims do not require that the mobile device perform or not perform certain functionality, such as the functionality described in applicant’s remarks. Rather, the claims are directed to the functionality of the computer device. Further, the steps performed by the computing device describe a process that determines and stores temporary card information, distributes a value related to the temporary card information to a customer to allow the customer to compute a temporary card number, processes a payment performed using the temporary card number by receiving a payment authorization request including the temporary card number, comparing it to a calculated temporary card data, sending another authorization request to an issuer using the actual account information, and receiving and forwarding the response to this authorization request, and then updates the temporary card number. This is a commercial interaction, and is thus an abstract idea that falls within the “certain methods of organizing human activity” grouping of abstract ideas. The claims do not provide an improvement to a technology, and the use of additional elements such as a computing device comprising a processor and a memory including processor executable instructions, as well as a mobile device does not provide a practical application or significantly more than the abstract idea because it only involves using a computer as a tool to automate and/or implement the abstract idea.
Applicant’s remaining remarks have been considered, but are moot in view of the new grounds of rejection.
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 1-2 and 4-5 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 1-2 and 4-5 are directed to a computing system comprising a memory and a processor. Therefore, these claims fall within the four statutory categories of invention.
The claims recite calculating, storing, and distributing temporary account information associated with a funding card number, authorizing a payment performed using the temporary account information, and updating the temporary account information, which is an abstract idea. Specifically, the claims recite “in association with a funding card Primary Account Number (PAN) registered in association to the [user], computing data for a virtual card, the data comprising a virtual card PAN, a key value, and an internal virtual card expiry value,” “storing the data for the virtual card in association with the funding card number PAN,” and “sending the key value to [the user],” “receiving a first payment authorization request from a merchant acquirer, the first payment authorization request comprising a requested payment amount and a candidate virtual PAN generated by [the user] based on the key value,” “validating the received candidate virtual PAN of the first payment authorization request against the computed virtual card PAN,” “responsive to the received candidate virtual PAN matching the computed virtual card PAN, sending a second payment authorization request to a funding card issuer, the second payment authorization request including the requested payment amount and the funding card PAN to which the computed virtual card PAN is associated,” and “responsive to the internal virtual card expiry value reaching a limit, updating the computed data for the virtual card,” and claim 2 recites “responsive to the second payment authorization request, receiving a payment authorization response from the funding card issuer,” and “sending the payment authorization response to the merchant acquirer,” which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (MPEP 2106.04 & 2106.04(a)) because it describes a process that determines and stores temporary card information, distributes a value related to the temporary card information to a customer to allow the customer to compute a temporary card number, processes a payment performed using the temporary card number by receiving a payment authorization request including the temporary card number, comparing it to a calculated temporary card data, sending another authorization request to an issuer using the actual account information, and receiving and forwarding the response to this authorization request, and then updates the temporary card number. These processes performed in claims 1 and 2 describe a commercial interaction. Accordingly, the claims recite an abstract idea (See MPEP 2106.04(a)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(d)), the additional elements of the claims such as the use of a computing device comprising a processor and a memory including processor executable instructions, as well as a mobile device, to perform the claimed functions, merely use a computer as a tool to perform an abstract idea. Specifically, these additional elements perform the steps or functions of “in association with a funding card Primary Account Number (PAN) registered in association to the [user], computing data for a virtual card, the data comprising a virtual card PAN, a key value, and an internal virtual card expiry value,” “storing the data for the virtual card in association with the funding card number PAN,” and “sending the key value to [the user],” “receiving a first payment authorization request from a merchant acquirer, the first payment authorization request comprising a requested payment amount and a candidate virtual PAN generated by [the user] based on the key value,” “validating the received candidate virtual PAN of the first payment authorization request against the computed virtual card PAN,” “responsive to the received candidate virtual PAN matching the computed virtual card PAN, sending a second payment authorization request to a funding card issuer, the second payment authorization request including the requested payment amount and the funding card PAN to which the computed virtual card PAN is associated,” and “responsive to the internal virtual card expiry value reaching a limit, updating the computed data for the virtual card,” and claim 2 recites “responsive to the second payment authorization request, receiving a payment authorization response from the funding card issuer,” and “sending the payment authorization response to the merchant acquirer.” Viewed as a whole, the use of a processor/computer 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)), 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 MPEP 2106.05), the additional elements of using a computing device comprising a processor and a memory including processor executable instructions, as well as a mobile device, to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of calculating, storing, and distributing temporary account information associated with a funding card number, authorizing a payment performed using the temporary account information, and updating the temporary account information. As discussed above, taking the claim elements separately, these additional elements perform the steps or functions of “in association with a funding card Primary Account Number (PAN) registered in association to the [user], computing data for a virtual card, the data comprising a virtual card PAN, a key value, and an internal virtual card expiry value,” “storing the data for the virtual card in association with the funding card number PAN,” and “sending the key value to [the user],” “receiving a first payment authorization request from a merchant acquirer, the first payment authorization request comprising a requested payment amount and a candidate virtual PAN generated by [the user] based on the key value,” “validating the received candidate virtual PAN of the first payment authorization request against the computed virtual card PAN,” “responsive to the received candidate virtual PAN matching the computed virtual card PAN, sending a second payment authorization request to a funding card issuer, the second payment authorization request including the requested payment amount and the funding card PAN to which the computed virtual card PAN is associated,” and “responsive to the internal virtual card expiry value reaching a limit, updating the computed data for the virtual card,” and claim 2 recites “responsive to the second payment authorization request, receiving a payment authorization response from the funding card issuer,” and “sending the payment authorization response to the merchant acquirer.” 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 calculating, storing, and distributing temporary account information associated with a funding card number, authorizing a payment performed using the temporary account information, and updating the temporary account information. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
The eligibility of dependent claim 2 is analyzed along with independent claim 1 above. Additionally, dependent claims 4-5 are also directed to the abstract idea. Specifically, claim 4 describes what the virtual card expiry value represents, but does not require any steps or functions to be performed. Claim 5 describes the payment as being performed over a Near Field Communication (NFC) system. However, this further describes the transaction, which is part of the abstract idea. The use of an NFC system to perform the payment does not provide a practical application or significantly more than the abstract idea because it only involves using a computer as a tool to automate and/or implement the abstract idea. 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 pre-AIA 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 –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claims 1-2 and 4-5 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Cardina, et al. (US 2012/0116902) (“Cardina”).
Regarding claim 1, Cardina discloses a computing device communicatively connected to a mobile device through a network, the computing device configured to facilitate a payment by the mobile device, the computer device comprising:
a processor (Cardina ¶¶ 73-75); and
a memory, the memory including processor executable instructions for (Cardina ¶¶ 74-75):
in association with a funding card Primary Account Number (PAN) registered in association to the mobile device, computing data for a virtual card, the data comprising a virtual card PAN, a key value, and an internal virtual card expiry value (Cardina ¶¶ 19-20, 34-37, 45-47, 54, 58).
storing the data for the virtual card in association with the funding card PAN associated to the mobile device (Cardina ¶¶ 19-20, 34-37, 45-48, 58);
sending the key value to the mobile device (Cardina ¶¶ 20-21, 35-37, 45-47);
receiving a first payment authorization request from a merchant acquirer, the first payment authorization request comprising a requested payment amount and a candidate virtual PAN generated by the mobile device based on the key value (Cardina ¶¶ 22-25, 49-50);
validating the received candidate virtual PAN of the first payment authorization request against the computed virtual card PAN (Cardina ¶¶ 25, 49-50, 68);
responsive to the received candidate virtual PAN matching the computed virtual card PAN, sending a second payment authorization request to a funding card issuer, the second payment authorization request including the requested payment amount and the funding card PAN to which the computed virtual card PAN is associated (Cardina ¶¶ 25-26, 50); and
responsive to the internal virtual card expiry value reaching a limit, updating the computed data for the virtual card (Cardina ¶¶ 40-41, 45, 57).
Regarding claim 2, Cardina discloses:
responsive to the sent second payment authorization request, receiving a payment authorization response from the funding card issuer (Cardina ¶¶ 26, 51); and
sending the payment authorisation response to the merchant acquirer (Cardina ¶¶ 26, 51).
Regarding claim 4, Cardina discloses that the virtual card expiry value is a number of transactions value (Cardina ¶¶ 35, 41, 57).
Regarding claim 5, Cardina discloses that the payment is performed over a Near Field Communication (NFC) system (Cardina ¶¶ 5, 16, 21-22, 38-39, 67).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wankmeuller, et al. (US 2010/0125516) (“Wankmeuller”) discloses computing data for a virtual card, the data comprising a virtual card Primary Account Number (virtual PAN) and a virtual card expiry value (Wankmeuller ¶¶ 13, 20, 27-30);
storing the data for the virtual card in association with a funding card Primary Account Number (PAN) associated to the mobile device (Wankmeuller ¶¶ 23, 32, 37, 39-42); and
sending the data for the virtual card to the mobile device for the mobile device to perform the payment with the virtual PAN (Wankmeuller ¶¶ 13, 20, 30, 43).
Wankmeuller further discloses receiving a first payment authorisation request from a merchant acquirer, the first payment authorisation request comprising the virtual PAN and a requested payment amount (Wankmeuller ¶¶ 8, 13, 21-22, 32, 36);
validating the received virtual PAN of the first payment authorization request against the computed data for the virtual card (Wankmeuller ¶¶ 8, 14, 23, 32, 37, 39-42);
retrieving information of the funding card based on the computed data for the virtual card when the received virtual PAN is validated (Wankmeuller ¶¶ 8, 14, 23, 32, 37, 39-42);
sending a second payment authorisation request to a funding card issuer, the second payment authorisation request comprising the funding card PAN and the requested payment amount (Wankmeuller ¶¶ 8, 14, 25, 32);
receiving a payment authorisation response from the funding card issuer (Wankmeuller ¶¶ 8, 14, 25, 32); and
sending the payment authorisation response to the merchant acquirer (Wankmeuller ¶¶ 8, 14, 26, 32).
Tieken (US 2011/0161233) discloses a gateway server, prior to executing transactions associated with a mobile device (i) obtaining and storing information and a set of card data defining a funding card (Tieken ¶ 68), responsive to receiving a transaction request, generating a first subset of virtual card data defining a virtual funding card, the first subset excluding a dynamic value corresponding to the virtual funding card, and sending the first subset of virtual card data to the mobile device (Tieken Abstract; ¶¶ 8, 74). Tieken further discloses receiving, from a merchant system, the first subset of virtual card data (Tieken ¶ 67).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohammad A. Nilforoush whose telephone number is (571)270-5298. The examiner can normally be reached Monday-Friday 12pm-7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John W. Hayes can be reached at 571-272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mohammad A. Nilforoush/Primary Examiner, Art Unit 3697