DETAILED ACTION
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 the Claims
Claims 1-4, 6, 8-14, 17-18, and 21-25, are presented for examination. Applicant filed a response to non-final Office action on 10/17/2025 amending claims 1-4, 6, 8-14, and 17-18; canceling claims 5, 7, 15-16, and 19-20; and adding new claims 21-25. In light of Applicant’s amendments, Examiner has withdrawn the previous § 101 and § 102 rejections. Examiner has, however, established new objection for claims 3, 4, 13, and 14; and new § 101 rejection for claims 1-4, 6, 8-14, 17-18, and 21-25, in the instant Office action. Since the new § 101 rejection was necessitated by Applicant’s amendments, the instant rejection of claims 1-4, 6, 8-14, 17-18, and 21-25, is FINAL rejection of the claims.
Examiner’s Remarks
Patent Eligibility under § 101:
Applicant argues in pages 13 and 17 of Applicant’s Remarks:
First, Applicant respectfully submits that amended independent claims 1, 11, and 17 do not recite a fundamental economic principle or practice, which is the grouping of abstract ideas identified in the non-final office action. To the contrary, amended independent claims 1, 11, and 17 recite improved software technology for performing certification testing of payment terminals such as contactless card readers, which is an inherently technological process that is plainly not a fundamental economic principle or practice.
Second, even if amended independent claims 1, 11, and 17 did recite subject matter that falls within one of the enumerated groupings of abstract ideas under Step 2A, Prong One, amended independent claims 1, 11, and 17 are patent eligible under Step 2A, Prong Two because they integrate any alleged abstract idea into a practical application. Under the Office's § 101 framework, if a claim provides a specific, technological improvement to existing technology, then that claim integrates any abstract idea that is allegedly recited in the claim into a practical application.
Third, even if amended independent claims 1, 11, and 17 were not found to be eligible under Step 2A of the Office's § 101 framework, Applicant respectfully submits that the combination of additional elements recited by amended independent claims 1, 11, and 17, when taken together, supply an inventive concept that amounts to significantly more than any alleged abstract idea that is recited in the claims under Step 2B of the Office's § 101 framework. Indeed, it is well established that "an inventive concept can be found in a non-conventional and non-generic arrangement of known, conventional pieces" that provides a technical improvement over prior art. Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016) (finding an "inventive concept" in claims that "recite a specific, discrete implementation of the abstract idea of filtering content" that is "is a technical improvement over prior art ways of filtering such content"); see also, e.g., Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1302 (Fed. Cir. 2016) (finding that "when all limitations are considered individually and as an ordered combination, they provide an inventive concept through the use of distributed architecture" that is a "technical improvement over prior art technologies"). In this respect, the discussion above in connection with Step 2A, Prong Two establishes that amended independent claims 1, 11, and 17 recite a non-conventional, non-generic arrangement of elements that provide a technical improvement over the prior art technology for performing certification testing of payment terminals.
Examiner respectfully disagrees.
First, contrary to Applicant’s arguments, Applicant’s recited claim limitations do not perform certification testing of payment terminals. Instead, the claimed limitations merely allow the user to select an operation mode and a virtual test card profile that are used in testing. No actual testing, however, is recited in the claims.
Second, Applicant’s recited claim limitations do not provide technological improvement to existing technology. As explained above, the claimed limitations merely allow the user to select an operation mode and a virtual test card profile that are used in testing. No actual testing, however, is recited in the claims.
Third, the Federal Circuit Court, in Electric Power Group, distinguished the claims at issue from the claims in Bascom explaining: “Nor do the claims here require an arguably inventive distribution of functionality within a network, thus distinguishing the claims at issue from those in Bascom …The claims in this case specify what information in the power-grid field it is desirable to gather, analyze, and display, including in “real time”; but they do not include any requirement for performing the claimed functions of gathering, analyzing, and displaying in real time by use of anything but entirely conventional, generic technology.” (10-11). Similarly here, the instant claims do not use anything besides entirely conventional, generic technology of general purpose computing system. While the Federal Circuit Court in Bascom found non-conventional and non-generic arrangement of the additional elements, no such non-conventional and non-generic arrangement of the additional elements is present with the instant claims. Therefore, instant claims 1-4, 6, 8-14, 17-18, and 21-25, are not patent eligible under § 101 in view of the Alice/Mayo Test.
Applicant is invited to set up an interview with Examiner to further discuss this matter.
Prior Art under § 102 and § 103: Closest prior art reference of record, Walters (US 9,449,320 B1) discloses testing of integrated circuit card payment terminals. Walters fails to disclose – either alone or in combination with other references – the following claim limitation found in independent claims 1, 11, and 17, as an ordered combination of steps with other claim steps:
present, via the display of the client device, a graphical user interface (GUI) of the software application that enables selection of:
(i) an operating mode for use in testing a given payment terminal from a set of operating-mode options presented via the GUI that includes at least (a) a first operating mode in which the client device emulates a physical payment card to use in testing the given payment terminal and (b) a second operating mode in which the client device configures a physical payment card to use in testing the given payment terminal; and
(ii) a virtual test card profile for use in testing the given payment terminal from the loaded set of virtual test card profiles; and
receive, via the GUI of the software application, (i) a first user selection, from the set of operating mode options, of a given operating mode for use in testing the given payment terminal and (ii) a second user selection, from the loaded set of virtual test card profiles, of a given virtual test card profile for use in testing the given payment terminal.
Claim Objections
Claims 3 and 13 are objected to because of the following informalities:
present, via the GUI of the client device, one or both of (i) test data logged by the client device or (ii) test data retrieved from the given physical payment card.
There should be definite article “the” in front of the both bolded instances of “test data” because each type of test data has already appeared in the claims 2 and 12 that claims 3 and 13 depend on. Applicant could amend claims 3 and 13 to recite:
present, via the GUI of the client device, one or both of (i) the test data logged by the client device or (ii) the test data retrieved from the given physical payment card.
Claim 4 and 14 objected to because of the following informalities:
transmit, to a remote computing system, one or both of (i) test data logged by the client device or (ii) test data retrieved from the given physical payment card.
There should be definite article “the” in front of the both bolded instances of “test data” because each type of test data has already appeared in the claims 2 and 12 that claims 4 and 14 depend on. Applicant could amend claims 4 and 114 to recite:
transmit, to a remote computing system, one or both of (i) the test data logged by the client device or (ii) the test data retrieved from the given physical payment card.
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 1-4, 6, 8-14, 17-18, and 21-25, are rejected under 35 USC § 101 because they are directed to non-statutory subject matter. The rationale for this finding is explained below.
The Supreme Court in Mayo laid out a framework for determining whether an applicant is seeking to patent a judicial exception itself or a patent-eligible application of the judicial exception. See Alice Corp., 134 S. Ct. at 2355,110 USPQ2d at 1981 (citing Mayo, 566 U.S. 66, 101 USPQ2d 1961). This framework, which is referred to as the Mayo test or the Alice/Mayo test (“the test”), is described in detail in Manual of Patent Examining Procedure (”MPEP”) (see MPEP § 2106(III) for further guidance). The step 1 of the test: It need to be determined whether the claims are directed to a patent eligible (i.e., statutory) subject matter under 35 USC § 101. Step 2A of the test: If the claims are found to be directed to a statutory subject matter, the next step is to determine whether the claims are directed to a judicial exception i.e., law of nature, natural phenomenon, and abstract idea (Prong 1). If the claims are found to be directed to an abstract idea, it needs to be determined whether the claims recite additional elements that integrate the judicial exception into a practical application (Prong 2). Step 2B of the test: If the claims are directed to a judicial exception, the next and final step is to determine whether the claims recite additional elements that amount to significantly more than the judicial exception.
Step 1 of the Test:
When considering subject matter eligibility under 35 USC § 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. Here, the claimed invention of claims 1-4, 6, 8-10, and 21-25, is a system and, thus, one of the statutory categories of invention. Further, the claimed invention of claims 11-14 is a non-transitory computer-readable medium, which is also one of the statutory categories of invention. Still further, the claimed invention of claims 17-18 is a series of steps, which is method (i.e., a process), which is also one of the statutory categories of invention.
Conclusion of Step 1 Analysis: Therefore, claims 1-4, 6, 8-14, 17-18, and 21-25, are statutory under 35 USC § 101 in view of step 1 of the test.
Step 2A of the Test:
Prong 1: Claims 1-4, 6, 8-14, 17-18, and 21-25, however, recite an abstract idea of performing testing of payment terminals. The creation of performing testing of payment terminals, as recited in the independent claims 1, 11, and 17, belongs to certain methods of organizing human activity (i.e., fundamental economic principles or practices including mitigating risk) that are found by the courts to be abstract ideas. The limitations in independent claims 1, 11, and 17, which set forth or describe the recited abstract idea, are found in the following steps:
“loading a set of virtual test card profiles” (claims 1, 11, and 17);
“enabling selection of (i) an operating mode for use in testing a given payment terminal from a set of operating-mode options that includes at least (a) a first operating mode emulating a physical payment card to use in testing the given payment terminal and (b) a second operating mode configuring a physical payment card to use in testing the given payment terminal; and (ii) a virtual test card profile for use in testing the given payment terminal from the loaded set of virtual test card profiles” (claims 1, 11, and 17); and
“based on the first and second user selections, selectively operating in either: (i) the first operating mode emulating a physical payment card in accordance with the given virtual test card profile by engaging in wireless communication to facilitate processing of a given test transaction; or (ii) the second operating mode configuring a given physical payment card to operate in accordance with the given virtual test card profile by engaging in wireless communication with the given physical payment card to wirelessly transfer at least a portion of the given virtual test card profile to the given physical payment card” (claims 1, 11, and 17).
Prong 2: In addition to abstract steps recited above in Prong 1, independent claims 1, 11, and 17, recite additional elements:
“a display” (claim 1);
“at least one communication interface” (claim 1);
“at least one processor” (claims 1, 11, and 17);
“at least one non-transitory computer-readable medium having stored thereon a software application, the software application comprising program instructions” (claims 1, 11, and 17); and
“a graphical user interface (GUI) of the software application” (claims 1, 11, and 17).
These additional elements are recited at a high level of generality (i.e., as a generic processor performing a generic computer functions) such that they amount to no more than mere instructions to apply the exception using generic computer components. Also, the following additional limitation recites insignificant extra solution activity (for example, data gathering):
“receiving: (i) a first user selection, from the set of operating mode options, of a given operating mode for use in testing the given payment terminal and (ii) a second user selection, from the loaded set of virtual test card profiles, of a given virtual test card profile for use in testing the given payment terminal” (claims 1, 11, and 17).
These additional elements/limitations do not integrate the abstract idea into a practical application because they do not impose a meaningful limit on the judicial exception. The additional elements/limitations of independent claims 1, 11, and 17, here do not render improvements to the functioning of a computer or to any other technology or technical field (see MPEP § 2106.05(a)), nor do they integrate the abstract idea into a practical application under MPEP § 2106.05(b) (particular machine); MPEP § 2106.05(c) (particular transformations); or MPEP § 2106.05(e) (other meaningful limitations). Further, the combination of these additional elements/limitations is no more than mere instructions to apply the exception using a generic device. Accordingly, even in combination, these additional elements/limitations do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Conclusion of Step 2A Analysis: Therefore, independent claims 1, 11, and 17, are non-statutory under 35 USC § 101 in view of step 2A of the test.
Step 2B of the Test: The additional elements of independent claims 1, 11, and 17 (see under Step 2A - Prong 2), are individually well-understood, routine, and conventional elements that amount to no more than implementing the abstract idea with a computerized system. The Applicant’s Specification describes these additional elements in following terms:
[0110] Turning now to FIG. 5, a simplified block diagram is provided to illustrate some structural components that may be included in an example computing platform 500 that may be configured to perform some or all of the platform-side functions disclosed herein. At a high level, computing platform 500 may generally comprise any one or more computer systems (e.g., one or more servers) that collectively include one or more processors 502, data storage 504, and one or more communication interfaces 506, all of which may be communicatively linked by a communication link 508 that may take the form of a system bus, a communication network such as a public, private, or hybrid cloud, or some other connection mechanism. Each of these components may take various forms.
[0111] For instance, the one or more processors 502 may comprise one or more processor components, such as one or more central processing units (CPUs), graphics processing units (GPUs), application-specific integrated circuits (ASICs), digital signal processors (DSPs), and/or programmable logic devices such as field programmable gate arrays (FPGAs), among other possible types of processing components. In line with the discussion above, it should also be understood that the one or more processors 502 could comprise processing components that are distributed across a plurality of physical computing devices connected via a network, such as a computing cluster of a public, private, or hybrid cloud.
[0112] In turn, data storage 504 may comprise one or more non-transitory computer-readable storage mediums, examples of which may include volatile storage mediums such as random-access memory, registers, cache, etc. and non-volatile storage mediums such as read-only memory, a hard-disk drive, a solid-state drive, flash memory, an optical-storage device, etc. In line with the discussion above, it should also be understood that data storage 504 may comprise computer-readable storage mediums that are distributed across a plurality of physical computing devices connected via a network, such as a storage cluster of a public, private, or hybrid cloud that operates according to technologies such as AWS for Elastic Compute Cloud, Simple Storage Service, etc.
[0113] As shown in FIG. 5, data storage 504 may be capable of storing both (i) program instructions that are executable by the one or more processors 502 such that the computing platform 500 is configured to perform any of the various functions disclosed herein (including but not limited to any of the server-side functions discussed above), and (ii) data that may be received, derived, or otherwise stored by computing platform 500.
This is a description of general-purpose computing system. Further, the additional limitation of “receiving” information amounts to no more than mere instructions to apply the exception using generic computer component. For the same reason this element is not sufficient to provide an inventive concept. The additional limitation of “receiving” information was considered insignificant extra-solution activity in Step 2A - Prong 2. Re-evaluating here in Step 2B, it is also determined to be well-understood, routine, and conventional activity in the field. Similarly to OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network), and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network), the additional limitation of independent claims 1, 11, and 17, receives data over a network in a merely generic manner. The courts have recognized receiving data function as well-understood, routine and conventional when claimed in a merely generic manner. Therefore, the additional limitation of independent claims 1, 11, and 17, are well-understood, routine, and conventional. Further, taken as combination, the additional elements/limitations add nothing more than what is present when the elements are considered individually. There is no indication that the combination provides any effect regarding the functioning of the computer or any improvement to another technology.
Conclusion of Step 2B Analysis: Therefore, independent claims 1, 11, and 17, are non-statutory under 35 USC § 101 in view of step 2B of the test.
Dependent Claims: Dependent claims 2-4, 6, 8-10, and 21-25, depend on independent claim 1; dependent claims 12-14 depend on independent claim 11; and dependent claim 18 depends on independent claim 17. The elements in dependent claims 2-4, 6, 8-10, 12-14, 18, and 21-25, which set forth or describe the abstract idea, are:
“while selectively operating in the first operating mode, the client device logs test data related to the given test transaction between the client device and the given payment terminal; and while selectively operating in the second operating mode, the client device wirelessly retrieves, from the given physical payment card, test data related to a test transaction between the given physical payment card and the given payment terminal” (claims 2, 12, and 18: further narrowing the recited abstract idea);
“presenting, via the GUI of the client device, one or both of (i) test data logged by the client device or (ii) test data retrieved from the given physical payment card" (claims 3 and 13: further narrowing the recited abstract idea);
“transmitting, to a remote computing system, one or both of (i) test data logged by the client device or (ii) test data retrieved from the given physical payment card" (claims 4 and 14: insignificant extra solution activity);
“while selectively operating in the first operating mode, the wireless communication with the given payment terminal is carried out over a near field communications (NFC) link between the client device and the given payment terminal” (claim 6: further narrowing the recited abstract idea);
“while selectively operating in the second operating mode, the portion of the given virtual test card profile is wirelessly transferred to the given physical payment card over a near field communications (NFC) link between the client device and the given physical payment card” (claim 8: insignificant extra solution activity);
“the software application further comprises program instructions that, when executed by the at least one processor, cause the client device to: determine an optimal location for positioning the given physical payment card relative to the client device when selectively operating in the second operating mode” (claim 9: further narrowing the recited abstract idea);
“the GUI of the software application comprises: a respective selectable GUI element for each of the first operating mode and the second operating mode; and a respective selectable GUI element for each virtual test card profile in the set of virtual test card profiles” (claim 10: further narrowing the recited abstract idea);
“transmit, via the at least one communication interface to a remote computing platform, a request for the virtual test card profiles; and after transmitting the request, receive, via the at least one communication interface from the remote computing system, the set of virtual test card profiles; and store the set of virtual test card profiles” (claim 21: insignificant extra solution activity);
“load the set of virtual test card profiles in response to one of (i) a user request to load the set of virtual test card profiles, (ii) a determination that a user is authorized to use to the software application, or (iii) a notification that an updated version of the set of virtual test card profiles is available for loading by the client device” (claim 22: further narrowing the recited abstract idea);
“while selectively operating in the first operating mode, the GUI of the software application presents an indication that the client device is emulating the physical payment card” (claim 23: further narrowing the recited abstract idea);
“the GUI of the software application comprises a GUI element that (i) indicates whether the client device is operating in either the first operating mode or the second operating mode and (ii) comprises (a) a first selectable element corresponding to the first operating mode that, when selected, causes the client device to being operating in the first operating mode and (b) a second selectable element corresponding to the second operating mode that, when selected, causes the client device to being operating in the second operating mode” (claim 24: further narrowing the recited abstract idea); and
“each of the set of virtual test card profiles comprises a data object that represents one or more of a test card type, a test card account number, a test card account holder name, an identifier of an issuer, or an identifier of a payment network” (claim 25: further narrowing the recited abstract idea).
Conclusion of Dependent Claims Analysis: Dependent claims 2-4, 6, 8-10, 12-14, 17-18, and 21-25, do not correct the deficiencies of independent claims 1, 11, and 17, and they are, thus, rejected on the same basis.
Conclusion of the 35 USC § 101 Analysis: Therefore, claims 1-4, 6, 8-14, 17-18, and 21-25, are rejected as directed to an abstract idea without “significantly more” under 35 USC § 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ulrich (US 12,475,449 B2) discloses: “Technologies for emulating payment transaction messaging for electronic payment transaction include a transaction management controller for receiving a transaction amount for a payment transaction from a business management engine and simulated payment card data for the payment transaction from a point of interaction emulator. The transaction management controller inserts the transaction amount and the payment card data into a test payment authorization request message, which is transmitted to a null host. A payment authorization response message is received from the null host and transmitted by the transaction management controller the business management engine Other embodiments are described and claimed.”
Applicant's amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRPI H. KANERVO whose telephone number is 571-272-9818. The examiner can normally be reached on Monday – Friday, 10 am – 6 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Abhishek Vyas can be reached on 571-270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VIRPI H KANERVO/ Primary Examiner, Art Unit 3691