DETAILED ACTION
Acknowledgements
This office action is in response to the claims filed 05/17/24.
Claims 1-20 are pending.
Claims 1-20 have been examined.
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 .
Information Disclosure Statement
An applicant's duty of disclosure of material information is not satisfied by presenting a patent examiner with "a mountain of largely irrelevant data from which he is presumed to have been able, with his expertise and with adequate time, to have found the critical data. It ignores the real world conditions under which examiners work." Rohm & Haas Co. v. Crystal Chemical Co., 722 F.2d 1556, 1573,220 U.S.P.Q. 289 (Fed. Cir. 1983), cert. denied 469 U.S. 851 (1984). An applicant has a duty to not just disclose pertinent prior art references but to make a disclosure in such way as not to "bury" it within other disclosures of less relevant prior art. See Golden Valley Microwave Foods Inc. v. Weaver Popcorn Co. Inc., 24 U.S.P.Q.2d 1801 (N.D. Ind. 1992); Molins PLC v. Textron Inc. 26 U.S.P.Q.2d 1889, 1899 (D. Del. 1992); Penn Yan Boats, Inc. v. Sea LarkBoats, Inc. et al.,175 U.S.P.Q. 260, 272 (S.D. FI. 1972). It is unreasonable for Examiner to review all of the cited references thoroughly. By initialing the accompanying 1449 forms, examiner is merely acknowledging the submission of the cited references and indicating that only a cursory review has been made.
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.
Subject Matter Eligibility Standard
When considering subject matter eligibility under 35 U.S.C. § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter (101 Analysis: Step 1). Even if the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) (101 Analysis: Step 2a(Prong 1), and if so, Identify whether there are any additional elements recited in the claim beyond the judicial exception(s), and evaluate those additional elements to determine whether they integrate the exception into a practical application of the exception. (101 Analysis: Step 2a (Prong 2). If additional elements does not integrate the exception into a practical application of the exception, claim still requires an evaluation of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception. If the claim as a whole amounts to significantly more than the exception itself (there is an inventive concept in the claim), the claim is eligible. If the claim as a whole does not amount to significantly more (there is no inventive concept in the claim), the claim is ineligible. (101 Analysis: Step 2b).
The 2019 PEG explains that the abstract idea exception includes the following groupings of subject matter: a) Mathematical concepts b) Certain methods of organizing human activity and c) Mental processes
Analysis
In the instant case, claim 1 is directed to a machine, claim 11 is directed to a method and claim 18 is directed to an article of manufacture.
Step 2a.1– Identifying an Abstract Idea
The claims recite the steps of “receive, … a start transaction message … acquire, …data … process … data …. ; process, …the processed data… and provide the transactional data ….” The recited limitations fall within the certain methods of organizing human activity grouping of abstract ideas, specifically, fundamental economic principles, for example, receiving and procession information for a transaction. Accordingly, the claims recites an abstract idea.
See MPEP 2106.
Step 2a.2 – Identifying a Practical Application
The claim does not currently recite any additional elements or combination of additional elements that integrate the judicial exception into a practical application.
The claim recites the receipt of information, processing and providing transaction information. The claims recite insignificant extra-solution activity performed by a generic computing device.
Accordingly, even in combination, these elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Mere instructions to apply the exception using generic computer components and limitations to a particular field of use or technological environment do not amount to practical applications. The claim in directed to an abstract idea.
Step 2b
The claim limitations recite “receive, … a start transaction message … acquire, …data … process … data …. ; process, …the processed data… and provide the transactional data ….” are not additional elements and they amount to no more than mere instructions to apply the exception using a generic computer component. For the same reason these elements are not sufficient to provide an inventive concept. This is also determined to be well-understood, routine and conventional activity in the field. The Symantec, TLI, and OIP Techs, court decision cited in MPEP 2106.05(d)(II) indicates that mere receipt or transmission of data over a network is a well-understood, routine and conventional function when it is claimed in a merely generic manner, as it is here. Therefore, when considering the additional elements alone, and in combination, there is no inventive concept in the claim and thus the claim is not eligible.
Viewed as a whole, instructions/method claims recite the concept of a fundamental economic practice as performed by a generic computer. The claims do not currently recite any additional elements or combination of additional elements that amount to significantly more than the judicial exception. The elements used to perform the claimed judicial exception amount to no more than mere instructions to implement the abstract idea in a network, and/or merely uses a network as a tool to perform an abstract idea and/or generally linking the use of the judicial exception to a particular environment.
Dependent claims 2-4, 6-8, 10, 12-17, 19 and 20 discuss functions in more descriptive detail of the steps geared toward the abstract idea. As such, these elements do not provide the significantly more to the underlying abstract idea necessary to render the invention patentable.
Claims 5, and 9 provide descriptive language surrounding the abstract idea. As such, these elements do not provide the significantly more to the underlying abstract idea necessary to render the invention patentable.
The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Therefore, based on case law precedent, the claims are claiming subject matter similar to concepts already identified by the courts as dealing with abstract ideas. See Alice Corp. Pty. Ltd., 573 U.S. 208 (citing Bilski v. Kappos, 561, U.S. 593, 611 (2010)).
The claims at issue amount to nothing significantly more than an instruction to apply the abstract idea using some unspecified, generic computer. See Alice Corp. Pty. Ltd., 573 U.S. 208. Mere instructions to apply the exception using a generic computer component and limitations to a particular field of use or technological environment cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Conclusion
The claim as a whole, does not amount to significantly more than the abstract idea itself. This is because the claim does not affect an improvement to another technology or technical filed; the claim does not amount to an improvement to the functioning of a computer system itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, the Examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
Dependent claims do not resolve the deficiency of independent claims and accordingly stand rejected under 35 USC 101 based on the same rationale.
Dependent claims 2-10, 12-17, 19 and 20 are also rejected.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-8, and 10-20 are rejected under 35 U.S.C. 103 as being unpatentable over Moreton et al. (US 20130095754) (“Moreton”), and further in view of Masaryk et al., (US 20110053556) (“Masaryk”).
Regarding claims 1, 11 and 18, Moreton discloses an interface to facilitate acquisition of data from payment apparatuses; an input/output controller to control a wireless connection between the add-on and a mobile device for performance of secured transactions; and a secure element, the secure element operating a transaction module at a first security level and an operating system (OS) at a second security level, the second security level different than the first security level, the secure element to (Abstract; ¶ 21-24, 60):
Moreton – The attachment may comprise an audio jack plug 502 and a housing 504. The housing 504 may be produced from plastic, metal alloy, or any other suitable substance. The housing 504 may contain a near field communication radio 506, a secure element 508, and an input/output module 510. In one embodiment, near field communication radio 506, secure element 508, and an input/output module 510 may all be combined into one chip, separated onto multiple chips or circuits, or any other possible combination. The near field communication radio 506 and secure element 508 may be connected in parallel, in series, or any other possible combination. (¶ 60)
receive, from a payment control application of the mobile device, a start transaction message for performance of a secured transaction ( ¶ 62-65; claim 25, 26);
Moreton – In block 602, a customer may initiate a request for a token. In various embodiments, a customer may “tap” the mobile device and attachment to a PoS device, for example to initiate the request for a token at the time of a transaction. ( ¶ 62):
acquire, via the interface, data from a payment apparatus based at least in part on the start transaction message ( ¶ 21, 70-73);
Moreton – The provisioning process may securely pass encrypted credit card details or other credentials to the secure element, such as the credit card account number, expiration date, and other track data… a customer may initiate a payment. In various embodiments, a customer may utilize software on the mobile device to signal that a payment is to be made. For example, the customer may select an option to pay, or the customer may be presented with various options for payment, including, for example, the account the customer desires to use for the transaction, the type of transaction, the amount of the transaction, the time that the attachment should ‘wait’ for the transaction, and/or the merchant targeted in the transaction. ( ¶ 21, 70):
process, via the OS at the second security level, the processed data from the transaction module to produce transactional data; and ( ¶ 71-77);
Moreton – the attachment may send payment information to the PoS device via the near field communication techniques described above. In an exemplary embodiment, the payment information may comprise, encrypted information, information similar to that transmitted in a credit card swipe transaction, or a message the payment process is ongoing. The payment information may comprise a dynamic card verification value (CVV3) generated at the time of the transaction. For example, the system may transmit encrypted information representing a customer's account with a financial institution to the PoS device. The payment information transmitted to a PoS device may be a message stating that the transaction is processing, and the mobile device may communicate further information to either the PoS device or another party or device via a non-NFC connection. ( ¶ 71):
provide the transactional data for transmission to a remote server for completing the secured transaction( ¶ 47, 70-77);
Moreton– The attachment 104 may contain an embedded NFC chip that can send encrypted data a short distance (“near field”) to a reader 106 located, for instance, next to a Point of Sale (PoS) device or like retail cash register that enables contactless payments… In various exemplary embodiments, the hardware contained in the attachment 104 may be partially or wholly redundant with the hardware inside the mobile device 102. Reader 106 may then communicate or otherwise transfer the data to and from payment networks 108. ( ¶ 47):
Moreton does not disclose process, via the transaction module at the first security level, the data from the payment apparatus to produce processed data.
Masaryk teaches process, via the transaction module at the first security level, the data from the payment apparatus to produce processed data (Abstract; ¶ 12, 23-26, 40, 41; claim 24);
Masaryk – During transmission, the data are processed in the secure element, which is placed in the computer mouse or which is connected to the computer mouse during transmission. The processing of the data within the secure element is based on the encryption and decryption of data… The secure element may be used for encryption of transferred data, ( ¶ 12, 25):
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Moreton and Masaryk in order to provide secure communication in data transmissions for electronic payments (Masaryk; ¶ 1-4).
Regarding claims 2 and 12, Moreton discloses wherein the interface is communicatively coupled with a processor of the mobile device executing the payment control application, and wherein to acquire the data from the payment apparatus includes to: provide, from the interface, the data from the payment apparatus to the processor of the mobile device for channeling to the secure element through the processor of the mobile device; and receive, from the processor of the mobile device, the data from the payment apparatus ( ¶ 62-73; claim 25, 26);.
Regarding claims 3 and 13, Moreton discloses wherein to acquire the data from the payment apparatus includes to directly control, by the secure element, the interface to directly acquire, from the interface, the data from the payment apparatus ( ¶ 70-73).
Regarding claims 4 and 14, Moreton discloses wherein the secure element is further to encrypt the data from the payment apparatus, wherein the transactional data includes the encrypted data from the payment apparatus ( ¶ 21, 47, 71). Masaryk teaches wherein encryption of the encrypted data from the payment apparatus prevents malicious programs running in parallel with the payment control application from intercepting the data from the payment apparatus (Abstract; ¶ 12, 23-26; claim 24).
Regarding claim 5, Moreton discloses wherein the data from the payment apparatus is processed independently of data processed by a processor executing the payment control application (Abstract; ¶ 21-24, 60, 70-73).
Regarding claims 6 and 15, Moreton discloses wherein to directly control the interface includes to: activate, by the secure element, a reader mode of the interface based at least in part on receipt of the start transaction message; and deactivate, by the secure element, the reader mode of the interface based at least in part on the data from the payment apparatus being obtained from the payment apparatus (¶ 21, 26, 27, 33, 80; claim 27).
Regarding claims 7 and 16, Moreton discloses a processor to: directly control the interface to channel the data from the payment apparatus, wherein to acquire the data from the payment apparatus includes to receive, by the secure element, the data from the payment apparatus channeled through the processor ( ¶ 47, 70-77).
Regarding claims 8 and 19, Moreton discloses wherein: the processor is a first processor; the first processor is communicatively coupled to a second processor of the mobile device executing the payment control application; the secure element is further to encrypt the data from the payment apparatus received from the first processor; the transactional data includes the encrypted data from the payment apparatus; and to provide the transactional data for transmission to the remote server includes to provide the transactional data through the first processor and the second processor to the remote server, wherein encryption of the encrypted data from the payment apparatus prevents malicious programs running in parallel with the payment control application from intercepting the data from the payment apparatus ( ¶ 21-26, 39-47, 60, 70-77).
Regarding claims 10 and 20, Moreton discloses wherein the secure element is further to: send, to the remote server, a request to authorize the secured transaction via a secured communication channel, wherein the request includes the transactional data; process a response received from the remote server to determine a status of the secured transaction; and transmit a notification of the status to the payment control application of the mobile device ( ¶ 39-47, 60, 70-77).
Regarding claim 17, Masaryk teaches wherein the processor is a first processor, wherein the first processor is communicatively coupled to a second processor of the mobile device executing the payment control application, and wherein the method further comprises: encrypting, by the secure element, the data from the payment apparatus received from the first processor, wherein the transactional data includes the encrypted data from the payment apparatus, and wherein providing the transactional data for transmission to the remote server includes providing the transactional data through the first processor and the second processor to the remote server, wherein encryption of the encrypted data from the payment apparatus prevents malicious programs running in parallel with the payment control application from intercepting the data from the payment apparatus (Abstract; ¶ 12, 23-26, 40, 41; claim 24).
Regarding claim 19, Moreton discloses wherein the computer-executable instructions, when executed by the add-on, further cause the add-on to: establish, by the secure element, a secured communication channel with the remote server over a communication channel previously established by the payment control application using networking resources of the mobile device, and wherein to provide the transactional data for transmission to the remote server includes to provide the transactional data to the remote server via the secured communication channel ( ¶ 39-47, 70-77).
Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over Moreton et al. (US 20130095754) (“Moreton”), in view of Masaryk et al., (US 20110053556) (“Masaryk”) and further in view of Li et al., (US 20140073375) (“Li”).
Regarding claim 9, neither Moreton nor Masaryk discloses wherein the second security level is higher than the first security level. Li teaches wherein the second security level is higher than the first security level. ( ¶ 57-59, 71, 74, 78). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Moreton, Masaryk and Li in order to control data access for secure communication (Li; ¶ 6-8).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Dolcino et al. (US 20140324698) (“Dolcino”) – 102, inventor
(US 20100306076)
Brands (US 9584958) teaches secure element processing data, NFC for secure transaction.
Dietze et al. (US 9900320) teaches security elements and levels of security.
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/ILSE I IMMANUEL/Primary Examiner, Art Unit 3699