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 .
DETAILED ACTION
Status of Claims
This action is in reply to the response filed on 11-19-2025. Claims 1-20 are currently pending and have been examined. Claims 1-3, 9-12, 17, 18 and 20 have been amended.
Patent-Ineligible Subject Matter - 35 U.S.C. § 101
Under 35 U.S.C. § 101, “[w]hoever 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.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217–18.
The U.S. Patent and Trademark Office (the “USPTO”) published revised guidance on January 7, 2019, for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the USPTO’s examination procedure with respect to the first step of the Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that [are] considered an abstract idea”; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50.1
The first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. 2019 Revised Guidance, 84 Fed. Reg. at 54; see also MPEP §§ 2106.04(II)(A)(1), 2106.04(a). If so, we next determine, in Step 2A, Prong Two, whether the claim as a whole integrates the recited judicial exception into a practical application of that exception, i.e., whether the additional elements recited in the claim beyond the judicial exception, apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Id.; see also MPEP §§ 2106.04(II)(A)(2), 2106.04(d). Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. Id.; see also MPEP § 2106.04(II)(A)(2).
If the claim is determined to be directed to a judicial exception under Step 2A, we next evaluate the additional elements, individually and in combination, in Step 2B, to determine whether they provide an inventive concept, i.e., whether the additional elements or combination of elements amounts to significantly more than the judicial exception itself; only then, is the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56; see also MPEP § 2106.05.
Analysis:
STEP 1
Is the claim(s) directed to a process, machine, manufacture or composition of matter?
Claims 1-20 are all directed to a statutory category (e.g., a process, machine, manufacture, or composition of matter). The answer is YES. Therefore, the issue now is whether it is directed to a judicial exception without significantly more.
STEP 2
Step 2A(i): Does the Claim Recite a Judicial Exception?
Claims 1-20 are directed to a method for instantly issuing replacement physical access instrument. The method involves receiving a security measure associated with a first physical access instrument by a processor. A user request is received to replace the instrument. A second security measure different from the first security measure is generated in response to the user request. A communication link is established with an automated teller machine (ATM) generation module. The link is utilized to instruct the module to generate another instrument to be dispensed to a user. The latter instrument is associated with the latter security measure. The user is prompted to input a personal identification number (PIN). The first physical access instrument is a first credit card.
From this we see that the claims do not recite the judicial exceptions of either natural phenomena or laws of nature. The next issue is whether it recites the judicial exception of an abstract idea. To answer this, we next determine whether it recites one of the concepts the Courts have held to be lacking practical application, viz. mathematical concepts2, certain methods of organizing human interactions3, including fundamental economic practices and business activities, or mental processes4.
The practice of replacing lost, stolen or damaged cards is a commercial interaction and a long-practiced human activity, with or without the involvement of technological means. Thus, the invention is an example of a conceptual idea subject to the Supreme Court's "concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity." See Alice, 573 U.S. at 216 (citations omitted). Thus the claims are directed to a certain method of organizing human activity.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
The 2019 Revised Guidance sets forth a non-exhaustive listing of considerations indicative that an additional element or combination of elements may have integrated a recited judicial exception into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55; see also MPEP § 2106.04(d). In particular, the Guidance describes that an additional element may have integrated the judicial exception into a practical application if, inter alia, the additional element reflects an improvement in the functioning of a computer or an improvement to other technology or technical field. Id. At the same time, the Guidance makes clear that merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea; adding insignificant extra-solution activity to the judicial exception; or only generally linking the use of the judicial exception to a particular technological environment or field are not sufficient to integrate the judicial exception into a practical application. Id.
The Examiner finds each of the limitations of claim 1 recites abstract ideas as Identified in Step 2A(i), supra, and none of the limitations integrate the commercial interaction into a practical application as determined under one or more of the MPEP sections cited above. The claim as a whole merely uses instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea.
Thus, on this record, Applicants have not shown eligibility under the guidance of Manual for Patent Examining Procedure section 2106.05(a) (“Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field”) or section 2106.05(e) (“Other Meaningful Limitations”).
Step 2B – “Inventive Concept” or “Significantly More”
Evaluating representative claim 1 under step 2 of the Alice analysis, the Examiner concludes it lacks an inventive concept that transforms the abstract idea of replacing physical access instrument cards into a patent-eligible application of that abstract idea. As evidence of the conventional nature of the recited processor, the Examiner refers to paragraphs 24, 27, 32, 92, 97, 98 and 111 of the Specification. The Examiner finds the processor computer components are well-understood, routine, and conventional. The generic computers described in the Specification are well-understood, routine, and conventional, at least because the Specification describes the computers in a manner that indicates they are sufficiently well-known that the Specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112 ¶ 1(a). See Berkheimer Memo5 § III.A.1. Thus, because the Specification describes the additional elements in general terms, without describing the particulars, the Examiner concludes the claim limitations may be broadly but reasonably construed as reciting conventional computer components and techniques, particularly in light of Applicants’ Specification, as quoted above.6
Dependent claims 2, 10 and 20 add the additional limitations of prompting, the user to input a personal identification number (PIN), forwarding, the inputted PIN to the second physical access instrument and authenticating, , an identity of the user. These are mental processes because other than generic computer components, nothing in the claim element precludes the step from practically being performed as in the human mind or with paper and pencil. See Planet Bingo, 961 F. Supp. 2d at 851. See also Guidance 84 Fed. Reg. at 52.
Dependent claims 3, 11 and 18 add the additional limitations of two user activity profiles of at least two user activity accounts, the first user activity profile being a first user activity account, with a first profile identifier as a first account identifier, and the second user activity profile being a second user activity account. This is all is nonfunctional descriptive material because it is a mere arrangement of data. Descriptive material is nonstatutory when claimed as descriptive material per se, 33 F. 3d at 1360, 31 USPQ2d at 1759. See MPEP §2011.05(II).
Dependent claims 4 and 12 add the additional limitations of prompting the user to bring the second physical access instrument in communication range with the physical access instrument generation module, the second physical access instrument and the physical access instrument generation module comprising at near-field communication or radio frequency identification, generating a first cryptogram based on the second physical access instrument, transmitting the first cryptogram to the physical access instrument generation module, generating a second cryptogram, determining, if the first cryptogram matches the second cryptogram, and authorizing, the user request to access the at least two user activity accounts if a match is determined between the first cryptogram and the second cryptogram. Prompting, generating, determining and authorizing are also mental processes. Transmitting is insignificant extra-solution activity because this is activity incidental to the primary process or product that is merely a nominal or tangential addition to the claim. See 2019 Revised Guidance, 55 n.31; see also MPEP § 2106.05(g). As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. Parker vs. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978).
Dependent claims 5 and 13 add the additional limitations of the first account and second identifier comprising a first personal account number. This is also nonfunctional descriptive material.
Dependent claims 6 and 14 add the additional limitation of receiving a user selection of the first user activity account. This is also insignificant extra-solution activity.
Dependent claims 7 and 15 add the additional limitation the physical access instrument generation module being an automated teller machine. This is also nonfunctional descriptive material.
Dependent claims 8, 16 and 19 add the additional limitation of the first and second physical access instruments are credit cards. This is also nonfunctional descriptive material.
Conclusion of Law
The examiner concludes that the claims do not provide an inventive concept because the additional elements recited in the claims do not provide significantly more than the recited judicial exception. From these determinations the examiner further notes that the claims do not recite an improvement to the functioning of the computer itself or to any
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other technology or technical field, a particular machine, a particular transformation, or other meaningful limitations. From this the examiner finds the claims are directed to a certain method of organizing human activity without significantly more.
Response to Arguments and amendments
Applicants argue:
“Therefore, the method of amended claim 1 further improves the computer-based technology of instant, machine-integrated card personalization and issuance by using the system-generated second security measure as a control data structure to orchestrate secure, on-device transformation of blank substrates into personalized physical access instruments.” Remarks at 14.
Claims 1-20 are directed to the issuance of replacement bank cards, and Applicants fail to identify how the various steps and functions performed by the server(s) provide an improvement to another technology, i.e., an improvement to how a computer or the recited server performs or executes the abstract idea identified in step 1 of Alice/Mayo framework. The claims do not disclose any improvement specific to the computer rather than an improvement to the underlying abstract ideas of receiving, generating, establishing a communications link, transmitting and associating. Applicants fail to detail any server interactivity which improves the performance of the computers (servers), communication network, or system overall.
Thus, although possibly providing an improvement to the underlying abstract ideas, the examiner finds insufficient evidence that the claims are directed to improving the technical field of computers, communications, networking, or otherwise. Indeed, the steps in the Applicant's claimed invention taken collectively may indicate improvements to the business process, but there is no specific improvement to the functioning of the computers, processors or networks themselves. While the presence of novel or non-obvious features in the Applicant's claimed invention may indicate an improvement to the business process, in the instant case it does not indicate an improvement to a technological process.
As to the second layer of security, providing enhanced security is itself an abstract idea that cannot form the basis for establishing that the claims contain significantly more than the abstract idea. Applicants’ arguments are unpersuasive because the Examiner notes that these recitations do not represent additional elements, but are instead part of the underlying abstract idea of claim 1.
And unlike in Enfish where the court specifically found the improvement to be in the way computers operation (822 F.3d at 1332, 1336), in Applicants’ claimed method, the processor performs steps that are within the normal ambit of generic computer functions. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (2014): “The claims’ invocation of computers adds no inventive concept. The computer functionality is generic and quite limited: a computer receives a request for a guarantee and transmits an offer of guarantee in return. There is no further detail. That a computer receives and sends the information over a network— with no further specification—is not even arguably inventive.”
Accordingly, for reasons of record and as set forth above, the examiner maintains the rejection of the claims as being directed to a judicial exception without significantly more, and thereby being directed to non-statutory subject matter under 35 USC §101.
This action is made final. Applicants are reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Conclusion
Prior art made of record and not relied upon that is considered pertinent to Applicants’ disclosure can be found on the attached PTO-892. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert R. Niquette whose telephone number is 571-270-3613. The examiner can normally be reached on Monday through Friday, 5:30 AM to 2:00 PM Eastern.
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, Abhishek Vyas, can be reached at 571-270-1836.
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/ROBERT R NIQUETTE/
Primary Examiner, Art Unit 3691
1 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates the revised guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020).
2 See e.g., Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972); Bilski v. Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018).
3 See e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Systems Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1383 (Fed. Cir. 2017); In re Marco Guldenaar Holding B. V., 2018 WL 6816331 (Fed. Cir. 2018).
4 See e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371-1372 (Fed. Cir. 2011); Intellectual Ventures I LLCv. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
5 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), USPTO 3 (2018) (available at https://www.uspto.gov/ sites/default/files/documents/memo-berkheimer-20180419.PDF) (explaining that a specification that describes additional elements “in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can show that the elements are well understood, routine, and conventional).
6 Claim terms are to be given their broadest reasonable interpretation, as understood by those of ordinary skill in the art and taking into account whatever enlightenment may be had from the Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).