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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on July 10, 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings submitted on March 15, 2024 are acceptable.
Election/Restrictions
Applicant’s election without traverse of group II, comprising claims 9-17 in the reply file on December 9, 2025 is acknowledged. Claims 1-8 are withdrawn from consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 14-17 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.
Antecedent Basis Issues:
In claim 14, the term “the contactless payment card” does not have sufficient antecedent basis. Since no “a contactless payment card” was previously recited, the language makes the scope of the claims indeterminate.
In claim 17, the term “the contactless payment card” does not have sufficient antecedent basis. Since no “a contactless payment card” was previously recited, the language makes the scope of the claims indeterminate.
In claim 14, the term “mobile device” does not have sufficient antecedent basis. Since no “a mobile device”, was previously recited, the language makes the scope of the claims indeterminate.
Claims 15-16 are also rejected under 35 USC 112(b) at least for their dependency to claim 14.
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 9-17 are rejected under 35 U.S.C. 101 because the claimed invention recites and is directed to a judicial exception to patentability (i.e., an abstract idea) and does not provide an integration of the recited abstract idea into a practical application nor include an inventive concept that is “significantly more” than the recited abstract idea to which the claim is directed. MPEP §2106.
In determining subject matter eligibility in an Alice rejection under 35 U.S.C. §101, it is first determined as Step 1 whether the claims are directed to one of the four statutory categories of an invention (i.e., a process, a machine, a manufacture, or a composition of matter). MPEP §2106.03.
Here, the claims are directed to the statutory category of a system (claims 9-13) and a manufacture (claims 14-17). Therefore, we proceed to Step 2A, Prong 1. MPEP §2106.
Under a Step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more enumerated categories of patent ineligible subject matter that amounts to a judicial exception to patentability. MPEP §2106.04. Independent Claim 9 is selected as being representative of the independent claims in the instant application. Claim 9 recites:
A mobile device, comprising:
a memory configured to store a mobile wallet application;
a contactless interface configured to contactlessly read information from a contactless payment card; and a processor configured to
receive a request from a user to contactlessly provision payment card information into the mobile wallet application;
contactlessly read payment card information from the contactless payment card;
generate a cryptogram including the payment card information;
generate a message requesting confirmation that the contactless payment card is eligible for contactless provisioning on the mobile wallet application;
receive a response message, the response message including a flag, the flag indicating at least one of (i) the contactless payment card is eligible for contactless provisioning on the mobile wallet application and (ii) the contactless payment card is not eligible for contactless provisioning on the mobile wallet application;
cause a message to be displayed to a user of the mobile device, the contents of the message based on the flag; and
contactlessly provision a tokenized version of the payment card information in the mobile wallet application in the event that the contactless payment card is eligible for contactless provisioning on the mobile wallet application.
Here, the claims recite an abstract idea, or combination of abstract ideas of provisioning a tokenized payment information (i.e., anonymized account number) to a user. The claim achieves this by functions comprising: receive a request …, read payment card information …, generate a cryptogram …, generate a message requesting confirmation …, received a response message …, cause a message to be displayed …, provision … As such, the claim recites abstract idea of certain method of organizing human activities, i.e., mitigating risk by provisioning anonymous account number.
Accordingly, it is determined that the claims recite an abstract idea since they fall within one or more of the three enumerated categories of patent ineligible subject matter. MPEP §2106.04.
Since it is determined that the claim(s) contain a judicial exception, it must then be determined, under Step 2A, Prong 2, whether the judicial exception is integrated into a practical application of the exception. MPEP §2106.04. In order to make this determination, the additional element(s) are analyzed to determine if the claim as a whole integrates the recited judicial exception into a practical application of that exception. Independent claim 9 recites the additional elements of a mobile device, a payment card, a memory, a mobile wallet application, contactless interface, and a processor. Independent claim 14 recites the additional elements of a non-transitory computer-readable storage medium, at least one programmable processor, a mobile device and a mobile wallet application. These additional elements are all recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception, or a portion thereof, using a generic computer component. See MPEP 2106.05(f). Additionally, Examiner finds no indication in the Specification, that the operations recited in the independent claims require any specialized computer hardware or other inventive computer components, i.e., a particular machine, invoke any allegedly inventive programming, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. Furthermore, there is no indication in the claim(s) that the use of a non-transitory computer-readable storage medium, a mobile device, a memory, a payment card, a mobile wallet application, contactless interface, processor and a storage device in combination with the abstract idea leads to an improvement of the processor, memory, another technology, or to a technical field. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Looking at the elements as a combination does not add anything more than the elements analyzed individually. Examiner further notes that even though the claims may not preempt all forms of the abstraction, this alone, does not make them any less abstract.
When analyzed under step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a generic computing component (e.g., a non-transitory computer-readable storage medium, a payment card, a mobile device, a memory, a mobile wallet application, contactless interface, processor and a storage device) to implement the abstract idea amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept or significantly more than the judicial exception. Considered as an ordered combination, the additional elements recited in the claim(s) add nothing that is not already present when the steps are considered separately.
Therefore, claim 9 and 14 are rejected under 35 U.S.C. §101 and are not patent eligible. Dependent claims 10-13 and 15-17 when analyzed are held to be patent ineligible under 35 U.S.C. §101 because the additional recited limitation(s) fail to establish that the claim(s) is/are not directed to an abstract idea.
Dependent claims 10 further refine the abstract idea by identifying terms, describing the flag (e.g., indicates success of the contents of the message) receive information indicating user’s acceptance of terms. These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea
Dependent claims 11 and 15 further refine the abstract idea by generating a provisioning message that cause a tokenized version of the payment card information. These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 12 and 16 further refine the abstract idea by indicating that the response message further includes information indicating that issuer verification is required and wherein the provisioning message is generated with information requesting issuer verification of the cryptogram generating a provisioning message that cause a tokenized version of the payment card information. These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 13 and 17 further refine the abstract idea by indicating that the flag indicates the contactless payment card is not eligible for contactless provisioning if the cryptogram cannot be verified. These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract ideas itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, the dependent claims are also not patent eligible.
Accordingly, it is determined that all claims are directed to non-statutory subject matter under 35 U.S.C. 101 and are ineligible.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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) 9-12, and 14-16 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Wong et al. (US 2022/0327527 A1).
Regarding claims 9 and 14:
Claim 9: A mobile device, (See at least Wong, Figs. 2-3; mobile device) comprising:
a memory configured to store a mobile wallet application (See at least Wong, [0135] memory);
a contactless interface configured to contactlessly read information from a contactless payment card; and a processor configured to:
Claim 14: A non-transitory machine-readable medium (See at least Wong, [0145] (claim 31) storing instructions that, when executed by at least one programmable processor, cause the at least one programmable processor to perform operations comprising:
receive a request from a user to contactlessly provision payment card information into the mobile wallet application; (See at least Wong, Fig. 3 (step 302); [0011]; [0050]; [0056]; [0060]; [0073] at block 302 to initially request a provisioning of an account, credit card, or any other payment credentials for the mobile device 101).
contactlessly read payment card information from the contactless payment card; (See at least Wong, Wong, Fig. 3 (step 302); [0011]; [0050]; [0056]; [0060]; [0073] e.g., payment card information is then transmitted (e.g., the card information is read).)
generate a cryptogram including the payment card information; (See at least Wong, [0060] The request for provisioning message may include device information such as a mobile device 101 identifier, secure element 202 identifier, a secure element key identifier ( or key), a user identifier (to identify a user or account), and user authentication information (e.g., a cryptogram such as a CVV2 for card verification based authentication processes, a ZIP code for geographic verification, etc.).
generate a message requesting confirmation that the contactless payment card is eligible for contactless provisioning on the mobile wallet application; (See at least Wong, Fig. 3; [0073] upon affirming that the credentials 350 are correct and for a valid account, will transmit a check account message 352 (e.g., make an API call for a card eligibility request) for one or more accounts of the user 107 to the service provider 230.)
receive a response message, the response message including a flag, the flag indicating at least one of (i) the contactless payment card is eligible for contactless provisioning on the mobile wallet application and (ii) the contactless payment card is not eligible for contactless provisioning on the mobile wallet application; (See at least Wong, Fig. 3 (308); [0077-0078]; At block 308, if an account is not eligible, the wallet provider 210 may transmit an ineligibility message 360 to the mobile device 101; If, at block 308, an account is eligible, the flow continues with the wallet provider 210 sending an enable payments query message 362 indicating that the account is eligible, and the user 107 and/or wallet application may, in response, cause another enable payments query response message 362 to be sent back to the wallet provider.)
cause a message to be displayed to a user of the mobile device, the contents of the message based on the flag; and (See at least Wong, Wong, Fig. 3 (308); [0077-0078]; which may cause a message
to be presented to the user 107 (e.g., via a display device) to indicate that the account is ineligible; sending an enable payments query message 362 indicating that the account is eligible.)
contactlessly provision a tokenized version of the payment card information in the mobile wallet application in the event that the contactless payment card is eligible for contactless provisioning on the mobile wallet application. (See at least Wong, Fig. 3; [0090-0091]; e.g., after determining account eligibility… generate and return a token, and may store a mapping between the token and the PAN for future translations.)
Regarding claim 10: Wong disclose the mobile device of claim 9. Wong further disclose wherein the contents of the message to be displayed to the user include terms and conditions to be accepted by the user, the terms and conditions identified based at least in part on the payment card information. (See at least Wong, [0078] The enable payments query message 362 may cause the mobile device 101 to also present a set of terms and conditions to the user during this service activation phase, which the user must accept to continue.)
Regarding claims 11 and 15: Wong disclose the mobile device of claim 9 and the non-transitory machine-readable medium of claim 14. Wong further disclose generate a provisioning message based on the flag of the response message, the provisioning message causing the generating of the tokenized version of the payment card information. (See at least Wong, [0093]; a token activation results message 380 to the wallet provider to confirm and/or deny whether the token (i.e., payment credential 207) was successfully provisioned (i.e., installed).)
Regarding claims 12 and 16: Wong disclose the mobile device of claim 11 and the non-transitory machine-readable medium of claim 14. Wong further disclose wherein the response message further includes information indicating that issuer verification is required and wherein the provisioning message is generated with information requesting issuer verification of the cryptogram. (See at least Wong, [0060-0061]; The request for provisioning message may include device information such as a mobile device 101 identifier, secure element 202 identifier, a secure element key identifier ( or key), a user identifier (to identify a user or account), and user authentication information (e.g., a cryptogram such as a CVV2 for card verification based authentication processes, a ZIP code for geographic verification, etc.; For example, if the request for provisioning included a PAN and a cryptogram, provisioning service module 225 may retrieve a master encryption key, use the master encryption key to decrypt the cryptogram, and ensure that the decrypted value is an expected value (e.g., corresponding to received value of the PAN). The provisioning service module 225 may then generate a payment token to provision onto the mobile device using token service 222. ).
Claim Rejections - 35 USC § 103
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 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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1 Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 13 and 17 is/are rejected under 35 U.S.C. 103 as being anticipated over Wong as applied to claims 9 and 14 above, and further in view of DESJARDINS (EP 3182315 A1) “Desjardins”.
Regarding claims 13 and 17: Wong disclose the mobile device of claim 9 and the non-transitory machine-readable medium storing instructions of claim 14. Wong further disclose For example, if the request for provisioning included a PAN and a cryptogram, provisioning service module 225 may retrieve a master encryption key, use the master encryption key to decrypt the cryptogram, and ensure that the decrypted value is an expected value (e.g., corresponding to received value of the PAN) Wong, [0061]. However, Wong does not explicitly disclose wherein the flag indicates the contactless payment card is not eligible for contactless provisioning if the cryptogram cannot be verified.
Desjardins, on the other hand teaches that it was known in the art, before the effective filing date of the claimed invention that if a cryptogram is not verified, user is not authenticated (e.g., wherein the flag indicates the contactless payment card is not eligible for contactless provisioning if the cryptogram cannot be verified. (See at least Desjardins, Abs.; [0006-0007]; [0034])
It would have been obvious to one of ordinary still in the art to include in the system/device of Wong, the ability to not permit the payment card provision (e.g., not allow further authentication) if a cryptogram is not verified as taught by Desjardins since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sharna (US 20200184482 A1): Uniquely, the systems and methods herein provide for improved provisioning of wireless devices (such as contactless payment cards), associated with accounts (such as payment accounts), to applications (such as wallet applications) of mobile devices. As an example, certain payment cards may be enabled to authenticate a user, through biometrics, and also to communicate wirelessly (i.e., via contactless communication) with devices in the vicinity of the payment cards. For such payment cards, wallet applications may be enabled to prompt the users associated with the payment cards to tap the payment cards on mobile devices (which include the wallet applications) and thereby authenticate the payment cards (and/or users associated with the cards) at the mobile devices. The payment cards will then provide one or more payment account credentials to the mobile devices, potentially, along with authentication results. The mobile devices, in turn, then communicate with issuers of the underlying payment accounts to approve and/or enable, based on the on-card authentications of the users, provisioning of the payment accounts to the mobile devices. When provisioned in this manner, friction and/or delay associated with conventional two-factor authentication, when implemented by other provisioning means, is avoided. Sharna, [0011].
Koshy (US 20250005555 A1): At 1924, after the third-party backend erver 1904 receives the card provisioning request from the third-party application 1902, the third-party backend server 1904 sends a session creation request to the authentication server 1906 to create a session for provisioning the contactless card to the third-party application 1902. In some embodiments, the session creation request includes a device identifier (ID) for the user's mobile device, a wallet ID of the user if a digital wallet is being used, a session ID of the session, and a client ID. This information is used by the authentication server 1906 to verify with the third-party backend server 1904 that the device ID and wallet ID are available for use by the website or application to which the user wishes to provision their payment method (e.g., the contactless card tapped to the mobile device). Koshy, [0315].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARLYANNIE M GARCIA whose telephone number is (571)272-6950. The examiner can normally be reached Monday - Friday 7:30am - 4:30-pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patrick McAtee can be reached at (571) 272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.G.M/Examiner, Art Unit 3698
/STEVEN S KIM/Primary Examiner, Art Unit 3698