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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/17/25 has been entered.
Status of Claims
Claims 1-4 and 6-9 are pending in this application.
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 1-4 and 6-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-4 and 6-9 are directed to a system, method, or product, which are/is one of the statutory categories of invention. (Step 1: YES).
The Examiner has identified independent system claim 1 as the claim that represents the claimed invention for analysis. Claim 1 recites the limitations of a method for changing/updating/converting mobile’s account credentials by relying on predetermined identifiers (e.g., an application identifier).
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity. Receiving a request to digitize second acct. in an app of a mobile device without user intervention; the request includes (i) a “first funding primary account number” (FRAN) associated with first acct, AND (ii) a second FRAN associated with second acct; determining first acct is different from second acct based on 1st and 2nd FPAN; if different, identifying an AID for second acct based on a segment of 2nd FPAN; transmitting a request to digitize second acct. in an app of a mobile device; identifying a script based on the AID for the 2nd acct. and/or the 2nd FPAN; script configures the mobile device to delete an instance of the application associated with the first account and to create the instance of the application for the second account in the mobile device; transmitting script to mobile device; creating an instance of the application for the second account and returns a notice to digitize the second account into the mobile device; receiving the notice to digitize the second account; transmitting the notice to digitize the second account to the token platform computing device; receiving a “notice” to digitize second acct. in an app of a mobile device; “notice” includes an AID for first acct; validating AID for first acct based on second acct. AID OR second acct. type; If validated, generating and transmitting personalization data for the app. to the digital computing device; transmitting personal data; and adopting the instance with the personalized data to digitize the second account in the application of the mobile device without intervention of the user at the mobile device, – specifically, the claim recites: “receive, from an issuer of a second account, a request to digitize the second account in an application of a mobile device specific to a user without intervention by the user, in place of a first account, the request including a first funding primary account number (FPAN) associated with the first account and a second FPAN specific to the second account; determine that a type of the second account is different than a type of the first account based on the first FPAN relative to the second FPAN; based on determining the type of the second account is different: identify an application identifier (AID) for the second account based on a segment of the second FPAN; and transmit… a request to digitize the second account… identifying a script based on the AID for the 2nd acct. and/or the 2nd FPAN… delete an instance of the application associated with the first account and to create the instance of the application for the second account… transmitting script… create an instance of the application for the second account and returns a notice to digitize the second account… receive the notice to digitize the second account, transmit the notice to digitize the second account… receive… a notice to digitize the second account to an instance of the application for the second account in the mobile device, the notice including an AID for the first account; validate the AID for the first account based on the AID for the second account and/or the type of the second account; and based on the AID for the first account being validated, generate and transmit personalization data for the instance of the application in the mobile device…. transmitting personal data… adopting the instance with the personalized data to digitize the second account in the application of the mobile device without intervention of the user at the mobile device”, recites a fundamental economic practice, directed to mitigating risk of fraudulent transactions.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice or commercial or legal interactions, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The “a system”, “mobile devices”, “a token platform computing device”, “a processing network” and “a digital platform computing device”, in claim 1, are just applying generic computer components to the recited abstract limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. (Step 2A-Prong 1: YES. The claims recite an abstract idea)
This judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements of: a computer such as a system, mobile devices, a token platform computing device, a processing network, and a digital platform computing device. The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. Therefore, claim 1 is directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware 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. Accordingly, these additional elements, do not change the outcome of the analysis, when considered separately and as an ordered combination. Thus, claim 1 is not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims further define the abstract idea that is present in their respective independent claim 1 and thus correspond to Certain Methods of Organizing Human Activity, and hence are abstract for the reasons presented above.
Dependent claim 2 discloses the limitation of wherein the token platform computing device is configured to compare the first FPAN and the second FPAN, in order to determine that the type of the second account is different than the type of the first account, which further narrows the abstract idea. Note that the technical element “the token platform computing device” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claim 3 discloses the limitation of wherein the request includes other data specific to the second account, the other data including a country code and/or a product name; and wherein the token platform computing device is configured to identify the AID for the second account further based on the other data, which further narrows the abstract idea. Note that the technical element “the token platform computing device” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claim 4 discloses the limitation of wherein the token platform computing device is configured, in order to identify the AID for the second account, to search for at least a part of the second FPAN in a data structure, which further narrows the abstract idea. Note that the technical element “the token platform computing device” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claim 6 discloses the limitation of wherein the personalization data includes a token specific to the second account; and/or wherein the personalization data includes an expiration date for the token and a verification code for the token, which further narrows the abstract idea. Note that the technical element “a token” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claim 7 discloses the limitation of wherein the personalization data includes card art specific to the type of the second account, which further narrows the abstract idea.
Dependent claim 8 discloses the limitation of wherein the type of the second account is different than the type of the first account based on brand and/or processing network; and wherein the first account is issued by said issuer, which further narrows the abstract idea. Note that the technical element “processing network” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claim 9 discloses the limitation of wherein the token platform computing device is configured, in order to validate the AID for the first account, to search for at least a part of the second FPAN in a data structure and compare an AID from the search to the AID for the first account received from the digital platform computing device, which further narrows the abstract idea. Note that the technical elements “the token platform computing device” and “the digital platform computing device” are recited at a high level of generality. They do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Thus, the dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the dependent claims are directed to an abstract idea. Thus, the claims 1-4 and 6-9 are not patent-eligible.
Response to Arguments
Applicant's arguments filed 10/17/25 have been fully considered but they are not persuasive.
In response to applicant's argument that:
“As amended herein, the pending claim recite the integration of the token platform and the digital platform into the processing network, whereby the two platforms are in concert to implement the technical solution of the claims,”
the examiner respectfully disagrees.
First, the examiner would like to address the newly added language. In comparison to the prior version, the added elements (see underlined) and deleted elements (if any, struck out with a line) are essentially:
(1) “a digital platform computing device integrated with the token platform computing device in a processing network ”;
(2) “a request to digitize the second account in an application of a mobile device specific to a user without intervention by the user”;
(3) “determine that a type of the second account is different than a type of the first account, based on the first FPAN relative to the second FPAN”;
(4) “identify an application identifier (AID) for the second account, based on a segment of the second FPAN”; and
(5) “the mobile device adapts the instance with the personalized data to digitize the second account in the application of the mobile device without intervention of the user at the mobile device”;
These changes are not sufficient to overcome the 35 U.S.C. § 101 rejections because: for 101 analysis purpose, this is just stating (corresponding to the numberings above):
explaining that the computing device is part of a network;
a step does not involve the user;
explaining that determining 1st acct is different from 2nd acct by the 1st and 2nd FPAN (account numbers);
explaining that identifying an AID for 2nd acct is based on a segment of 2nd FPAN (account numbers); and
explaining that the purpose of the mobile device adopting “the instance with the personalized data” is to digitize the second account in the application of the mobile device without user intervention
Items (ii)-(v) are abstract ideas. There is nothing technical about it.
As for item (i), the technical element “a processing network” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
In response to applicant's argument that:
“DDR Holdings… This is rooted in technology, and creates the technical problem of updating or replacing that technology instance, as needed. For example, where a second account is to be an instance of the application in the mobile device in place of an instance of a first, different account. The pending claims solve the technical problem through the specific integration of the digital platform and the tokenization platform, to execute specific operations to not only replace the instance of the application, but to do so with no intervention from the user of the mobile device,”
the examiner respectfully disagrees. The generated script that linked the new account is based on predetermined/agreed-upon identifiers. This is a business process/ idea. As stated in the prior office action:
“Managing account credentials by relying on predetermined identifiers is very different from improving the display on an electronic screen. The claimed invention is not improving the technology (e.g., improving a viewable internet page). Unlike DDR, the claimed invention clearly uses “generic computers” to carry out a business idea.”.
In response to applicant's argument that:
“The pending claims enable a "conversion [] in the mobile device [] with limited or no involvement of the user of the mobile device." See, {0013 of the instant application; see also {0056 ("The friction of involving the user to replace/convert an outdated, obsolete, or not preferred account type is therefore limited, or eliminated by the present disclosure"),”
the examiner respectfully disagrees. The improvement – if any – is due to the business procedure/idea being implemented. It is not due to any technological improvement.
In response to applicant's argument that:
“Plainly, the claims address a technical problem brought about by technology, which is no different than the retention of users at a website in DDR (without the user intervention to do so). Here, rather than employing a hybrid website, the pending claims require a script to be provided to the mobile device, and executed therein, to delete an instance of the application and to create a new one. The digital platform and the tokenization platform, as integrated in the processing network, cooperate to perform a specific ordered combination of operations, which results in the new instance being adapted to the personal information of the user. This is an automatic update to the second account - without the specific intervention by the user. This is a technical improvement by the standards explained in DDR,”
the examiner respectfully disagrees. Again, these are business procedure/steps being carried out by “generic computer”. As stated in the prior office action:
“The claim is directed to changing/updating/converting mobile’s account credentials by relying on predetermined identifiers (e.g., an application identifier). This is a procedure (carried out by a “generic computer”). It is important to note that the claimed invention is not improving any computation or communication device. It is not improving any encryption or authentication technology. It is merely implementing a particular procedure for updating/managing credentials. As such, it is not patent eligible under 35 U.S.C. § 101.”.
In response to applicant's argument that:
“the Office attempts to redefine the standard for an abstract idea… The Office now insists that when the standard was articulated as "fundamental" economic practice ... it was actually supposed to be any economic practice. The Office cannot read the word fundamental out of the standard, and as such, the pending claims do not fall within the confines of a "fundamental economic practice." The rejection should be withdrawn,”
the examiner respectfully disagrees that the claims are not directed to a fundamental economic practice. As discussed above and in the prior office actions, the process and procedures in the claims clearly and unequivocally represent a fundamental economic practice in commercial transactions. The specification clearly states that the invention is used for “account credential conversions, in which account credentials are converted, in mobile devices, based on changes in account types associated therewith”, i.e., a process to replace or update payment credential in the mobile device. See Specification Background. As stated in the prior office action:
“The specification makes clear that this claimed invention is part of the process of managing transaction credentials. See paragraph 2 “the present disclosure generally relates to systems and methods for use in account credential conversions”; paragraph 4 “The credentials, in turn, may be used to initiate transactions, where the credentials are associated with payment accounts, and the payment accounts are used to fund the transactions”.
and
“The term "fundamental" does not necessarily evoke something foundational. And, in the 35 U.S.C. § 101 context, what constitutes “essential element of an economic function” does not have to be a universally encompassing function. The Alice court does not demand that only those processes/transactions that are – by themselves – essential to the economy would be controlled by the 35 U.S.C. § 101 eligibility. All transactions – even those unique and less common – are parts of a functioning market economy”.
In response to applicant's argument that:
“The claims are not directed to a commercial interaction. The Office argues that the specification mentions transactions… The test is not what the specification is directed to ... the test is what the claims are directed to. Here, the claims are not directed to a commercial interaction,”
the examiner respectfully disagrees. The examiner relies on the specification to supplement the understanding of what the claim is doing – that this claimed invention is part of the process of managing transaction credentials. As stated above, the claimed step of generating script that linked the new account is based on predetermined/agreed-upon identifiers. This is a business process/abstract-idea.
In response to applicant's argument that:
“With regard to DDR, the Office simply dismisses the case as being related to different technologies. This is not proper,”
the examiner respectfully disagrees. The teaching of DDR is based on the claims presented in DDR.
In response to applicant's argument that:
“Bascom is controlling precedent from the Federal Circuit. That precedent is not limited to claims that recite "customized server filters" as demanded by the Office,”
the examiner respectfully disagrees. Similarly, the teaching of Bascom is based on the claims presented in Bascom.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK H GAW whose telephone number is (571)270-0268. The examiner can normally be reached Mon-Fri: 9am -5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mike Anderson can be reached on 571 270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARK H GAW/Examiner, Art Unit 3693