DETAILED ACTION
Status of Application
This action is a Final Rejection. This action is in response to the amendment and response filed on July 29, 2026.
Claims 3, 10, and 17 have been canceled.
Claims 1, 8, and 15 have been amended.
Claims 1, 2, 4-9, 11-16, and 18-23 are pending and rejected.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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 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.
Response to Arguments
Regarding the rejection under 35 U.S.C. 101, Applicant argues that the claimed invention uses a “two-phase process that provides for enhanced security and prevents fraud with less input data and, thus, less processing time.” Remarks at 10. Applicant asserts that “[p]rior to the present invention, online ‘card-not-present’ transactions suffered from inherent security vulnerabilities and inefficiencies. Systems could not easily verify that the person initiating a digital transaction was the actual possessor of the physical card without requiring repetitive, vulnerable data entry or complex physical card re-reading.” Id. Applicant points to the two phases of the process: Registration Phase and Authorization Phase. Id. Applicant asserts that this two-phase process “improve[s] the operation of the computer system itself” and “allows the system to process authorizations with less input data at the time of the transaction (because the physical card does not need to be present or re-read) and reduces processing time, all while enhancing fraud prevention.” Id. However, registering biometric data that can be used in place of a physical card for later authorization does not provide a technological improvement, but instead an alleged improvement to the abstract idea. Furthermore, even if the claimed process reduces computer processing time, inherent efficiencies of using a computer are not technological improvements. See MPEP 2106.05(f)(2) (“Similarly, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015).”). See also MPEP 2106.05(a) (“Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality: … ii. Accelerating a process of analyzing audit log data when the increased speed comes solely from the capabilities of a general-purpose computer, FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095, 120 USPQ2d 1293, 1296 (Fed. Cir. 2016) ….”).
Applicant further argues that “because the specific, ordered combination recited in the claims would not have been obvious to a person of ordinary skill in the art, it cannot be logically dismissed as ‘well-understood, routine, and conventional’ activity under the § 101 analysis.” Remarks at 11. However, the rejection does not assert that the additional elements are well-understood, routine, or conventional. Moreover, withdrawal of an obviousness rejection does not affect the eligibility analysis. See MPEP 2106.05(I) (“Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. See Mayo, 566 U.S. at 91, 101 USPQ2d at 1973 (rejecting "the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101 "). As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty."). In addition, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103. See, e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) ("The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces."). Specifically, lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101. The distinction between eligibility (under 35 U.S.C. 101 ) and patentability over the art (under 35 U.S.C. 102 and/or 103 ) is further discussed in MPEP § 2106.05(d).”).
Applicant further argues that the instant claims are similar to those in Ancora because they “improve computer security by verifying a digital transaction using a pre-established hardware-to-biometric binding, eliminating vulnerabilities associated with conventional card-not-present processing.” Remarks at 11-12. However, a technological improvement such as preventing hacking by using BIOS memory instead of other computer memory to determine whether a program is licensed, as in Ancora, is distinct from the instant claims, which register biometric data with an account associated with a contactless card and then use that biometric data to authorize a transaction.
Applicant further argues that the instant claims are similar to those in CosmoKey because they “recite a highly analogous, specific out-of-band authentication system and method that leverage a previously registered physical card to reduce required input data and processing time at a point of sale, representing a clear inventive concept under CosmoKey.” Remarks at 12. In CosmoKey, the Federal Circuit stated that “the claim limitations are more specific and recite an improved method for overcoming hacking by ensuring that the authentication function is normally inactive, activating only for a transaction, communicating the activation within a certain time window, and thereafter ensuring that the authentication function is automatically deactivated. The specification explains that these features in combination with the other elements of the claim constitute an improvement that increases computer and network security, prevents a third party from fraudulently identifying itself as the user, and is easy to implement and can be carried out even with mobile devices of low complexity.” In contrast, the instant claims do not increase computer and network security even if they provide for a secure transaction.
Therefore, the rejection is maintained.
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, 4-9, 11-16, and 18-23 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Does the Claim Fall within a Statutory Category? (see MPEP 2106.03)
Yes, with respect to claims 1, 2, 4-7, and 21, which recite a method and, therefore, are directed to the statutory class of process.
Yes, with respect to claims 8, 9, 11-14, and 22, which recite a non-transitory computer readable medium and, therefore, are directed to the statutory class of manufacture.
Yes, with respect to claims 15, 16, 18-20, and 23, which recite a server device which comprises a processor and, therefore, are directed to the statutory class of machine or manufacture.
Step 2A, Prong One: Is a Judicial Exception Recited? (see MPEP 2106.04(a))
The following claims (Claims 1, 2, 4-7, and 21 are representative) identify the limitations that recite the abstract idea in regular text and that recite additional elements in bold:
1. A method comprising:
executing a registration process by:
receiving, by a processor executing on a server and via a short-range communication antenna of a mobile device, encrypted data from a contactless card;
successfully decrypting, by the processor, the encrypted data;
authenticating, by the processor, the contactless card in response to successfully decrypting the encrypted data;
receiving, by the processor and via the mobile device, first biometric data;
storing, by the processor, the first biometric data in a biometric profile of a customer account associated with the contactless card;
executing an authorization process by:
receiving, by the processor, a request to authorize a digital transaction in connection with the customer account from a merchant website;
identifying, by the processor, the mobile device and the biometric profile as being associated with the customer account;
transmitting, by the processor, a solicitation message to the mobile device in response to receiving the request to authorize the digital transaction and identifying the mobile device as being associated with the customer account;
receiving, by the processor and from the mobile device, second biometric data in response to the solicitation message;
comparing, by the processor, the second biometric data with the biometric profile in response to receiving the second biometric data and identifying the biometric profile as being associated with the customer account;
transmitting an authorization message from the processor to the merchant website when the second biometric data matches the biometric profile; and
transmitting a denial message from the processor to the merchant website when the second biometric data fails to match the biometric profile,
wherein the authorization process is successfully executed without the contactless card being present during the digital transaction.
2. The method of claim 1 further comprising:
transmitting the solicitation message to the mobile device when the digital transaction satisfies at least one predetermined risk factor.
4. The method of claim 1 wherein the solicitation message includes a link to a website for verifying transaction details of the digital transaction or activating a user input device of the mobile device for receiving the second biometric data.
5. The method of claim 1 wherein the biometric profile is stored on the server.
6. The method of claim 5 further comprising:
receiving the second biometric data via a biometric profile identification field of an application program interface hosted by the server.
7. The method of claim 1 wherein successfully decrypting the encrypted data and authenticating the contactless card include:
identifying the customer account associated with the contactless card;
decrypting protected data in the encrypted data;
comparing the protected data to record data stored in a data profile of the customer account; and
authenticating the contactless card when the protected data matches the data profile.
21. The method of claim 1 wherein the first biometric data, the biometric profile, and the second biometric data are unshared with the merchant website.
Yes. But for the recited additional elements as shown above in bold, the remaining limitations of the claims recite certain methods of organizing human activity. The claims are directed to transaction authorization. This type of method of organizing human activity is a fundamental economic practice because it includes the processing of a payment and a commercial interaction such as sales activities or behaviors and business relations. Thus, the claims recite an abstract idea.
Step 2A, Prong Two: Is the Abstract Idea Integrated into a Practical Application? (see MPEP 2106.04(d))
No. The claims as a whole merely use a computer as a tool to perform the abstract idea. The computing components (i.e., additional elements that are in bold above) are recited at a high level of generality and are merely invoked as a tool to implement the steps. For example, only a programmed general purpose computing device and an existing mobile device are needed to implement the claimed process. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea. Additionally, there is no improvement to the functioning of a computer or technology. Therefore, the abstract idea is not integrated into a practical application.
Step 2B: Does the Claim Provide an Inventive Concept? (see MPEP 2106.05)
No. As discussed with respect to Step 2A, Prong 2, the additional elements in the claims, both individually and in combination, amount to no more than tools to perform the abstract idea. Merely performing the abstract idea using a computer cannot provide an inventive concept. Therefore, the claims do not provide an inventive concept.
As such, the claims are not patent eligible.
Relevant Prior Art
The following references are relevant to Applicant’s invention:
Capurso et al., U.S. Patent Application Publication Number 2021/0192494 A1. This reference teaches secure authentication based on data stored on a contactless card.
Lal et al., U.S. Patent Application Publication Number 2025/0053984 A1. This reference teaches enabling a payment based on biometric input.
Email Communications
Per MPEP 502.03, Applicant may authorize email communications by filing Form PTO/SB/439, available at https://www.uspto.gov/sites/default/files/documents/sb0439.pdf, via the USPTO patent electronic filing system.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH H ROSEN whose telephone number is (571) 270-1850 and email address is elizabeth.rosen@uspto.gov. The examiner can normally be reached Monday - Friday, 10 AM ET - 7 PM ET.
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/ELIZABETH H ROSEN/Primary Examiner, 3693
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