DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Receipt of Applicant’s amendments filed on January 2, 2026 is acknowledged.
Response to Amendment
Applicant amended claims 1, 8, and 15.
Claims 1-20 are pending and have been examined.
Response to Arguments
Applicant's arguments filed January 2, 2026 have been fully considered but they are not persuasive.
Regarding 112 Rejections
Examiner initially rejected claims 1-20 under 35 USC 112(b) / 2nd paragraph as being indefinite. Applicant amended the claims to address the antecedent basis issue. In view of the amended claims, Examiner withdraws this rejection.
Regarding 101 Rejections
Examiner initially rejected claims 1-20 under 35 USC 101 as being directed to non-statutory subject matter.
Applicant argued that the claims a recite a practical application of the judicial exception. Applicant argued the claims present a technical improvement by limiting the number of transactions or monetary amount. Examiner does not find this argument persuasive. Applicant’s claims do not improve technology; the underlying technology remains unaffected by the claims. Applicant is addressing a business problem (completing financial transactions) with a business solution. Applicant is merely using existing technology (for its intended purpose) to implement the business solution. Any improvements lie in the abstract idea itself, not in underlying technology. It is not a technical solution to place conditions/limitations on the transaction (e.g., the number of transactions or the monetary amount). Applicant merely focuses on the utility of the claims, which in and of itself does not mean there is a technical improvement. Any potential improvements to the data structure or security of the transaction is the result of the underlying business methods; not an improvement to technology or any other standard that qualifies as a practical application. The identified limitations do no amount to a practical application because they are a part of the abstract idea. Outside of the abstract idea there remains only the computer implementation of the abstract idea and extra-solution activity. Neither of these are indicative of a practical application. Applicant’s claims do not address a technical limitation/deficiency in the art and thus does not amount to a practical application.
Examiner maintains this rejection.
Regarding Double Patenting Rejections
Examiner initially rejected claims 1-20 under 35 USC 103 on the ground of nonstatutory double patenting. Applicant indicated they would address this issue once the claims are otherwise in an allowable condition. Until that time Examiner maintains this rejection.
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. The claims recite the abstract idea which may be summarized as completing a financial transaction using a transaction token.
Step 1 Analysis
Applicants claims are directed to a process (claims 15-20), machine (claims 8-14), and manufacture/product (claims 1-7).
Step 2A, Prong 1 Analysis
Claims 1, 8 and 15 recite the abstract idea/limitations of:
receive a request for issuance of a transaction token for a financial transaction,
wherein the request includes an indication of a value needed for the transaction token and a situational data type indicating a predetermined situation;
maintain a situation-specific predetermined value for each of a plurality of predetermined situations in a list of differing predetermined situations,
wherein the list comprises multiple users with individualized limits on a per-user basis,
wherein each user in the list is associated with a user-specific running period, a user-specific cumulative token value per running period, and a user-specific lifespan;
determine the predetermined value for the request based on the list;
perform a multi-factor authentication (MFA) unless the value needed does not exceed the predetermined value, the number of requested transaction tokens does not exceed a predetermined number of tokens, a cumulative token value does not exceed the user-specific cumulative token value per running period, and the user-specific lifespan has not expired;
issue the transaction token after the MFA is successful; and
complete the financial transaction using the transaction token.
As drafted these limitations are a process that falls within the “Certain Methods of Organizing Human Activity grouping of abstract ideas; but for the recitation of generic computer components. If a claim limitation, under its broadest reasonable interpretation, recites performance of the limitation as a fundamental economic practice, and commercial/legal interactions then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. By reciting/claiming a certain method of organizing human activity, Applicant’s claims recite an abstract idea.
Step 2A, Prong 2 Analysis
This judicial exception is not integrated into a practical application because the claims only recites system components for implementing the abstract idea and extra-solution activity. The claims recite the additional limitations of a non-transitory machine-readable medium, program code, a browser extension, a processor, a memory; and they are recited at a high level of generality. These system components amount to no more than mere instructions to apply the exception using a generic computer. These limitations generally link the use of the judicial exception to a technological environment and are not indicative of integration into a practical application. The limitations of:
receive a request for issuance of a transaction token for a financial transaction,
as drafted are insignificant extra-solution activity. These steps are mere data gathering and storing of information and do not qualify as a practical application of the judicial exception. See MPEP 2106.05(g). These additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claims as a whole do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea without a practical application.
Step 2B Analysis
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 judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of a non-transitory machine-readable medium, program code, a browser extension, a processor, a memory; amount to no more than mere components to implement the judicial exception using a generic computer components. For the same reason these elements are not sufficient to provide an inventive concept. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The limitations of:
receive a request for issuance of a transaction token for a financial transaction,
as drafted are insignificant extra-solution activity. These steps are mere data gathering and storing and do not qualify as significantly more than the judicial exception as they are well-understood, routine, and conventional activity when clamed in a merely generic manner (as it is here). See MPEP 2106.05(g). See Applicant’s specification paragraphs [0050], [0127-0146], about implementation of the abstract idea using general purpose or special purpose computing devices; and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. 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. Thus Applicant’s claims are not patent eligible.
Dependent Claims Analysis
As for dependent claims 2-5, 8-12, and 16-19, these claims recite limitations that further define the same abstract idea noted in independent claims 1, 8, and 15. Therefore, claims 2-5, 8-12, and 16-19 are considered ineligible subject matter for the reasons given above.
As for dependent claims 6, 7, 13, 14, and 20, these claims recite limitations that further define the same abstract idea noted in independent claims 1, 8, and 15. In addition, the recite the additional elements of a device, a same device, a new device. The components are recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. This is not indicative of a practical application or significantly more. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. Therefore, claims 7, 14, and 20 are considered ineligible subject matter.
Thus, the dependent claims 2-7, 9-14, and 16-20 are not patent-eligible either.
Examiner Request
The Applicant is requested to indicate where in the specification there is support for amendments to claims should Applicant amend. The purpose of this is to reduce potential 35 USC 112(a) or 35 USC 112 first paragraph issues that can arise when claims are amended without support in the specification. The Examiner thanks the Applicant in advance.
Prior Art
There was no prior art rejection on file. Examiner has conducted an updated prior art search in view of the new claims and will not provide an art rejection at this time.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,026,702. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘702 patent performs the same underlying method (e.g., receiving /maintaining /determining /performing /issuing /completing) with further obvious limitations such as selecting a situation-specific predetermined value and summing a number of tokens. As such the claims are obvious variations of each other.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,120,452. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘542 patent performs the same underlying method (e.g., receiving /maintaining /determining /performing /issuing /completing) with further obvious limitations such as selecting a situation-specific predetermined value and summing a number of tokens and claiming the interface associated with the method. As such the claims are obvious variations of each other.
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 MICHAEL J WARDEN whose telephone number is (571)272-9602. The examiner can normally be reached M-F; 9-6 CDT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett M Sigmond can be reached at 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL J. WARDEN/
Examiner
Art Unit 3694
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694