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 .
Status of Claims
This action is in response to filings received 07/02/2026.
Claims 1, 8 & 15 being independent while 2-7, 9-14 & 16-20 are dependent claims.
Claims 1, 4, 8, 11, 15 & 18 have been amended.
Claims 1-20 are currently pending and have been examined.
Response to Arguments
Applicant's arguments filed 07/02/2026 have been fully considered but are not persuasive. The rejection under 35 USC 101 is maintained.
With respect to Step 2A, Prong One, Applicant principally argues that the amended claims recite a technical authentication workflow rather than merely shifting financial liability or making a commercial judgment. The Examiner respectfully disagrees. as explained int eh rejection below, when the additional elements are set aside for purposes of identifying the recited judicial exception, the claim recites receiving information relating to an online transaction, identifying stored information associated with an account holder, comparing the received information with the stored information, determining a mismatch, performing challenge based verification, and making an transaction related determination. These limitations concern commercial interactions and evaluation of information and therefore remain within the identified abstract idea.
With respect to Step 2A, Prong Two, Applicant argues that the Specification identifies a technological deficiency in conventional issuer side authorization systems because issuers allegedly operate in the blind without sufficient web-client or session information, and that the amended claim addresses this deficiency through API-based attribute acquisition, storage of session and device attribute data in a digital wallet, mismatch detection, and challenge based verification. This argument is not persuasive. Although the amendments provide additional detail regarding the information used and the sequence of the authentication process, the claim does not recite a technological improvement to the operation of the API, digital wallet, web-client, communication network, or other computer component. Rather, the recited components obtain, store, compare, receive, and transmit information in carrying out the claimed authentication and transaction process.
Applicant further argues that the amended claim defines a specific authentication mechanism because a mismatch triggers generation of a challenge prompt, challenge answer data is received from an entry field of the web-client, and verification occurs prior to transmitting authorization for the online transaction. The Examiner respectfully disagrees that these limitations establish the asserted technological improvement. While the amendments further specify the authentication workflow, they do not recite a modification to the underlying authentication protocol or a technological mechanism by which authentication itself is technically performed. The amendments define when a challenge is generated, where responsive information is received, and when verification occurs relative to authorization, but do not recite a particular technological mechanism that improves how the API generates the challenge, how the web-client receives the challenge answer data, how the mismatch is technically detected, or how the computer or network itself operates. Specifying a particular sequence for carrying out authentication and authorization does not, without more, establish an improvement to computer or authentication technology.
Applicant also relies on coordinated interaction between the issuer API, merchant system, and web-client interface. However, the claim uses those components to carry out the claimed information exchange and authentication process according to their respective functions. The claim does not recite a change to the architecture or operation of those components or a particular communication protocol or other technological mechanism by which the asserted improvement is achieved. Accordingly, the recited interaction does not integrate the judicial exception into a practical application.
Applicant further argues that the dependent claims recite additional technical features. In particular, Applicant relies on claim 2’s transmission of a verification code to a device of the account holder and claim 4’s determination that a threshold number of the plurality of web-client attributes differ from the attribute data included in the digital wallet, followed by transmitting a notification indicating that the second online transaction is rejected. These arguments are not persuasive. Transmitting a verification code further specifies the information used in the challenge process, while determining whether a threshold number of attributes differ establishes a rule for evaluating the collected information and determining whether the transaction is rejected. Neither limitation recites a technological improvement to the operation of the recited computer components. The corresponding limitations of claims 9 and 16, and claims 11 and 18, respectively, are deficient for the same reasons.
With respect to Step 2B, Applicant argues that the ordered combination is not routine or conventional because the claim coordinates the issuer API, merchant system, and web-client interface with stored session and device attribute data, mismatch-triggered authentication, challenge generation, receipt of challenge answer data, verification, and subsequent notification. This argument is not persuasive. The relevant inquiry considers the additional elements individually and as an ordered combination. Here, the ordered combination uses the recited computer components to perform the information acquisition, storage, comparison, communication, and verification operations required by the claimed authentication process. The amendments further define the sequence in which those operations occur, but do not recite a nonconventional technological implementation of the computer components or otherwise provide an inventive concept beyond implementation of the abstract idea using the recited computer environment.
For the above reasoning, Applicant’s amendments and arguments do not establish that the judicial exception is integrated into a practical application under Step 2A, Prong Two, or that the claims recite significantly more than the judicial exception under Step 2B. The rejection of claims 1-20 under 35 U.S.C. § 101 is therefore 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 1-20 rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims do fall within at least one of the four categories of patent eligible subject matter because independent claim 1 is directed to a process, claim 8 is directed to a system, and claim 15 is directed to a non-transitory computer-readable device; Step 1-yes.
Under Step 2A, Prong 1, representative claim 1 recites a series of steps for shifting fraud liability, i.e. sales activities or behaviors, and thus grouped as “Certain Methods of Organizing Human Activity”. The claim as a whole and the limitations in combination recite this abstract idea. Specifically, the limitations of representative claim 1, stripped of all additional elements, recite the abstract idea as follows:
A computer implemented method, comprising:
receiving a request to authorize an online transaction identifying an account holder and a web-client attribute corresponding to a web-client requesting the online transaction, wherein the web-application attribute includes session attribute data or device attribute data;
identifying a digital wallet corresponding to the account holder identified in the request, wherein the digital wallet stores attribute data comprising the session attribute data and device attribute data corresponding to the account holder identified in the request;
determining that the web-client attribute does not match the attribute information included in the digital wallet;
in response to determining that the web-client attribute does not match the attribute information included in the digital wallet:
generating a challenge prompt to authenticate the account holder prior to transmitting an authorization for the online transaction;
transmitting the challenge prompt for display to the account holder on the web-client;
receiving prior to transmitting the authorization for the online transaction, challenge answer data responsive to the challenge prompt wherein the challenge answer data is received from an entry field of the web-client;
verifying that the challenge answer data satisfies the challenge prompt; and
in response to the verifying, transmitting a notification indicating a shift of financial liability for the online transaction from the merchant to the account issuer.
The claimed limitations, identified above, recite a process that, under its broadest reasonable interpretation, covers performance of a commercial or legal interaction, but for the recitation of generic computer components. There is nothing in the claim element which takes the steps out of the methods of organizing human activity abstract idea grouping. Thus, claim 1 recites an abstract idea.
Under step 2A, Prong 2, the judicial exception is not integrated into a practical application. In particular, the claim recites additional computer components including an API associated with an account issuer system, a merchant system, a communications network, a digital wallet, and a web-client. These components are used to obtain and store information, compare information, generate and transmit a challenge prompt, receive challenge answer data, verify the challenge answer data, and transmit a notification. The computer components (i.e. an application programming interface (API) associated with an account issuer system, server and communication network) are recited at a high-level of generality (i.e. as generic processors with memory suitably programmed communication information over a generic network, see at least paragraphs 11-19, 22, 24, 47, 50-52, 61 & 65 of the specifications) such that it amounts no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses computer as a tool to perform the abstract idea, see MPEP 2106.05(f) and generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05(h). Furthermore, the steps of “receiving, at an account issuer system from a merchant system, a request to authorize an online transaction …”, “transmitting, by the account issuer system, a challenge prompt …”, “receiving, by the account issuer system and from the merchant system…” and “transmitting, by the account issuer system, a notification from the account issuer …” are considered adding insignificant extra-solution activity to the judicial exception, see MPEP 2106.05(g).
The amended limitations further specify that the digital wallet stores attribute data comprising session attribute data and device attribute data corresponding to the account holder, that the API generates a challenge prompt to authenticate the account holder prior to transmitting an authorization for the online transaction to the merchant system, and that challenge answer data is received form an entry field of the web-client prior to transmitting the authorization. However, these limitations do not improve the functioning of the computer, API, digital wallet, web-client, communications network, or other technology. Rather, the additional elements implement the claimed comparison, authentication, and transaction decision making using the recited computer components as tools.
In particular, the claim does not recite a particular technological manner in which the API obtains the attribute data, a technological improvement to how the digital wallet stores the attribute data, a technological mechanism by which the mismatch is determined, or an improvement to the operation of the web-client by receiving challenge answer data from an entry field. Likewise, requiring the challenge generation and receipt of challenge answer data to occur prior to transmitting authorization specifies the sequence in which the authentication and authorization operations occur, rather than an improvement to the functioning of the computer components themselves.
Thus, the additional elements do not impose a meaningful limit on the judicial exception or otherwise integrate the judicial exception into a practical application. Accordingly, claims 1, 8 & 15 remain directed to an abstract idea.
Under Step 2B, the claim does not include additional elements, individually or as an ordered combination, sufficient to amount to significantly more than the judicial exception. the additional elements include the account issuer system, merchant system, API, communications network, digital wallet, and web-client, which perform their respective functions of receiving, storing, comparing, generating, transmitting, displaying, and receiving information in implementing the claimed authentication and transaction process.
The amended limitations specifying storage of session and device attribute data in the digital wallet, generation of a challenge prompt prior to transmitting authorization, and receipt of challenge answer data form an entry field of the web-client prior to transmitting authorization do not provide an inventive concept. Considered individually, these limitations use the recited computer components to perform the information processing and communication functions required by the claimed process. Considered as an ordered combination, the limitations arrange those operations into a particular authentication and authorization sequence, but do not recite a nonconventional technological implementation of the recited computer components or otherwise provide an inventive concept that amounts to significantly more than the judicial exception.
Accordingly, the additional elements, whether considered individually or as an ordered combination, do not provide an inventive concept sufficient to transform the abstract idea into patent eligible subject matter. Claim 1, 8 and 15 are not patent eligible.
The dependent claims 2-7, 9-14 & 16-20 when analyzed as a whole an in an ordered combination, remain patent ineligible under 35 USC 101. The additional limitations further refine the claimed authentication and transaction process but do not provide a technological improvement or an inventive concept. For example, claims 2, 9 and 16 further recite transmitting a verification code to a device of the account holder, and claims 4, 11 and 18 further recite determining that a threshold number of the plurality of web-client attributes data differ from the attribute data included in the digital wallet, and transmitting a notification indicating that the second online transaction is rejected. These limitations further specify the information used and rules applied in carrying out the authentication process, but do not improve the functioning of the computer components or otherwise integrate the judicial exception into a practical application or provide significantly more than the judicial exception.
The claims merely amount to the application or instructions to apply the abstract idea (i.e. a series for shifting fraud liability) on one or more computers, and are considered to amount to nothing more than requiring a generic computer system (e.g. processors suitably programmed and communicating over a network) to merely carry out the abstract idea itself. As such, the claims, when considered as a whole, are nothing more than the instruction to implement the abstract idea (i.e. a series for shifting fraud liability) in a particular, albeit well-understood, routine and conventional technological environment.
Accordingly, the Examiner concludes that there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself or integrate the judicial exception into a practical application.
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 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 TONY P KANAAN whose telephone number is (571)272-2481. The examiner can normally be reached Monday- Friday 7:30am - 3:30 pm EST.
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/T.P.K./Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696
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