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 .
Response to Arguments
Applicant's arguments filed 23 April 2026 with respect to the 101 rejection have been fully considered but they are not persuasive. Applicant argues on pages 9-10 argues that the office fails to provide any clarification to the alleged abstract idea. As the Applicant points out, “other than the above statements” is the rejection presented by the Examiner and meets the MPEP as well as Office guidelines that identifies the abstract idea, the additional limitations, and goes through the steps/prongs of the eligibility analysis. The Applicant presents furth arguments on pages 10-11 such as multi-issuer environments, central system of the current invention, and data segregation, but none of these features or benefits are present in the claim limitations as written. Applicant further argues on pages 11-12 that the claims are similar to example 47, but the Examiner disagrees because anomaly detection as well as the claim limitations are not similar to the current claims and no artificial neural network or machine learning is present or claimed. The Applicant further argues that the claims improve the security of electronic transaction, which is done through authenticating a user before activation of an instrument is a form of risk mitigation.
The drawings submitted on 4/23/2026 are accepted and the previous objection of 23 January 2026.
Applicant's arguments filed 23 April 2026 with respect to the 10 have been fully considered but they are not persuasive. Applicant argues that Cook does no teach or disclose the limitations on pages 14-15 of the Remarks. The Applicant fails to address the citations from the previous rejection and focused on different, non-cited portions of the references which is not particularly responding to the previous rejection. Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections. Additionally, Cook shows col.6 ll. 4-14 the one or more memories may store data and or computer code for facilitating the various processes and the computing device is not a mere conduit for passing information and can also store information used in the processes.
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 1-20 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, claim 1 is directed to a “computer implemented method”. Claim 1 is directed to the concept of “using rules to activate a payment instrument” and “authenticating a user” which is grouped under “organizing human activity… fundamental economic practice (authenticating a user before activation of an instrument is a form of risk mitigation), commercial or legal interactions (collecting authentication information is similar to the business relation of processing information through a clearing house)” in prong one of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance). Claim 1 recites accessing the stored one or more computing device activation keys upon verifying one or more user authentication keys, receiving, using the at least one processor, one or more contactless card activation keys, the one or more contactless card activation keys being stored by the contactless card, and activating, using the at least one processor, the contactless card based on a determination that the received one or more contactless card activation keys match the stored one or more computing device activation keys. Accordingly, the claim recites an abstract idea (See 2019 Revised Patent Subject Matter Eligibility Guidance). This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional elements of the claim such as a processor of a computing device, a computing device, a non-transitory storage media, and a server represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use (MPEP 2106.05(f)&(h)). Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. implement) the acts of using rules to activate a payment instrument.
When analyzed under step 2B (See 2019 Revised Patent Subject Matter Eligibility Guidance), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claims merely describe the concept of using rules to activate a payment instrument using computer technology (e.g. a processor and a computing device). Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Dependent claims 2-9 and 11-19 do not remedy the deficiencies of the independent claims and are rejected accordingly. The dependent claims further refine the abstract idea of the independent claims and do not integrate the abstract idea into a practical application In this case, all claims have been reviewed and are found to be substantially similar and linked to the same abstract idea (see Content Extraction and Transmission LLC v. Wells Fargo (Fed. Cir. 2014)).
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) 1-20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Cook US 12450591.
As per claims 1 and 20:
Cook discloses a computer implemented method, comprising: executing, using at least one processor of a computing device, an application on the computing device upon the computing device detecting a contactless card to be located within a predetermined distance of the computing device, the computing device storing one or more computing device activation keys, the contactless card being an inactive contactless card (Fig 4 ‘401’, col. 15 l. 60-col. 16 l.4);
accessing, using the at least one processor, the stored one or more computing device activation keys upon verifying one or more user authentication keys received in response to the executing (Figs 8, 9, 10; col. 24 l. 34-col.25 l.13, see also col.6 ll. 4-14);
receiving, using the at least one processor, one or more contactless card activation keys, the one or more contactless card activation keys being stored by the contactless card (Figs 8, 9, 10; col. 24 l. 34-col.25 l.13; see also col.6 ll. 4-14 the one or more memories may store data and or computer code for facilitating the various processes); and
activating, using the at least one processor, the contactless card based on a determination that the received one or more contactless card activation keys match the stored one or more computing device activation keys (Fig. 7B, Figs 8 ‘806’, 9 ‘926’; col. 24 l. 34-col.25 l.13).
As per claim 2:
Cook further discloses the method according to claim 1, wherein the activating includes sending the received one or more contactless card activation keys and the stored one or more computing device activation keys to at least one server, the at least one server being communicatively coupled to the computing device (Fig. 7B, Figs 8 ‘806’, 9 ‘926’; col. 24 l. 34-col.25 l.13).
As per claim 3:
Cook further discloses the method according to claim 2, wherein the at least one server is configured to execute a comparison of the received one or more contactless card activation keys and the stored one or more computing device activation keys (col. 31 ll.15-41);
determine, based on the comparison, whether the received one or more contactless card activation keys match the stored one or more computing device activation keys (col. 31 ll.15-41);
upon a determination of a match between the received one or more contactless card activation keys and the stored one or more computing device activation keys, transmit an activation signal to the contactless card to activate the contactless card (col. 31 ll.15-41, figs 7B, 8, and 9); and
upon a failure to determine a match between the received one or more contactless card activation keys and the stored one or more computing device activation keys, prevent transmission of the activation signal to the contactless card (col. 31 ll.15-41; col. 28 ll.30-43).
As per claim 4:
Cook further discloses the method according to claim 3, wherein the at least one server is configured to transmit the one or more computing device activation keys to the computing device (Fig. 8, col. 23 ll. 12-64).
As per claim 5:
Cook further discloses the method according to claim 1, wherein the executing includes executing a near-field communication (NFC) exchange between the contactless card and the computing device upon the contactless card being detected by the computing device to be located within the predetermined distance of the computing device (Fig 4 ‘401’, col. 15 l. 60-col. 16 l.4).
As per claim 6:
Cook further discloses the method according to claim 5, wherein the executing includes automatically triggering, based on the NFC exchange, generation of at least one user interface, the at least one user interface including one or more prompts for entry of the one or more user authentication keys (col. 29 ll.40-34, see also figs 11&12).
As per claim 7:
Cook further discloses the method according to claim 6, wherein the one or more user authentication keys includes at least one of the following: a facial recognition data, a fingerprint data, a biometric data, a username and a password, a multi-factor authentication token, and any combination thereof (col. 29 ll.40-34, see also figs 11&12).
As per claim 8
Cook further discloses the method according to claim 1, wherein the contactless card includes at least one of the following: a credit card, a debit card, an electronic gift card, a pre-paid credit card, a pre-paid debit card, and any combination thereof (col. 3 ll.62-63).
As per claim 9:
Cook further discloses the method according to claim 1, wherein the computing device is configured to execute a comparison of the received one or more contactless card activation keys and the stored one or more computing device activation keys (col. 31 ll.15-41);
determine, based on the comparison, whether the received one or more contactless card activation keys match the stored one or more computing device activation keys (col. 31 ll.15-41);
upon a determination of a match between the received one or more contactless card activation keys and the stored one or more computing device activation keys, transmit an activation signal to the contactless card to activate the contactless card (col. 31 ll.15-41, figs 7B, 8, and 9); and
upon a failure to determine a match between the received one or more contactless card activation keys and the stored one or more computing device activation keys, prevent transmission of the activation signal to the contactless card (col. 31 ll.15-41; col. 28 ll.30-43).
As per claims 10-19: Claims 10-19 are rejected under the rationales of claims 1-9.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hart US 2020/0104830 Jain US 2009/0065572 Rule US 2022/0237590 Rule US 2022/0335412 Rappoport US 2024/0249259
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 DAVID P SHARVIN whose telephone number is (571)272-9863. The examiner can normally be reached M-F 9 am - 5 pm EST.
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, Ryan Donlon can be reached at 571-270-3602. 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.
/DAVID P SHARVIN/Primary Examiner, Art Unit 3692
Prosecution Insights