DETAILED ACTION
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
This action is in reply to the remarks and/or arguments for Application 18/742,251 filed on 2 January 2026.
Claims 1, 2, 4, 8-10, 12, 15, 16, and 18 have been amended.
Claims 1-20 are currently pending and have been examined.
Response to Arguments
Rejection Under 35 U.S.C. § 112
Claims 8-20 stand rejected under 35 U.S.C. § 112 (b) as being indefinite.
Applicant’s arguments and/or amendments to the claims have been considered and are persuasive. Accordingly, the rejection of the claims under 35 U.S.C. § 112(b) is withdrawn.
Rejection Under 35 U.S.C. § 101
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to an abstract idea without significantly more.
1. Applicant argues that the claims integrate the judicial exception into a practical application because the claims recite a technical improvement.
Examiner respectfully disagrees. The mere fact that the claims are applied and directed to a particular problem does not change the fact that the claims are drawn to an abstract idea or abstract ideas. Moreover, simply executing an abstract concept on a computer does not render a “technical improvement” over prior art systems nor does it transform a patent-ineligible claim into a patent-eligible one. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687F.3d 1266, 1280 (Fed. Cir. 2012).
In this instance, the recited technological components – e.g., “processing circuits”, “customer device”, do no more than implement the abstract idea and therefore do not provide an improvement to computer functionality, or to another technology or technological field (MPEP 2106.04(a)(1)). According to the MPEP this is no more than “apply it” (2106.05(f)(1)) and not an improvement to computer functionality (MPEP 2106.05(a)), respectively.
There is no actual improvement made to the operations or physical structure of the additional elements claimed. There are no actual improvements to another technology or technical field, no improvements to the functioning of the computer itself, and there are no meaningful limitations beyond generally applying the use of the abstract idea to a particular technological environment evident in the claims. The focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. Applicant’s argument is therefore unpersuasive.
The rejection is therefore maintained.
Rejections Under 35 U.S.C. § 103
Claims 1, 3-8, and 10-20 stand rejected under 35 U.S.C. § 103 as being unpatentable over U.S. Patent No. 11,551,200 ("Cook") and U.S. Patent Publication No. 2018/0075450 ("Hurry").
Claims 2 and 9 stand rejected under 35 U.S.C.§ 103 as being unpatentable over Cook, Hurry, and U.S. Patent No. 12,045,831 ("Seal").
The Office has given consideration to the remarks and amendments made to the pending set of claims, but are considered moot in light of the grounds of rejection, provided below, for the current listing of claims.
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, representative method claim 8 is directed towards facilitating proactively prompting and digitally setting personal identification numbers (PINs) associated with payment cards in an automatic manner involving the use of rules and/or instructions to facilitate the setting personal identification numbers (PINs) associated with payment cards comprising the steps of merely
verifying (“determining that a PIN has not been set for a new card”), processing (“generating a card mailer”, “setting the PIN for the new card”), transmitting (“receiving a request from a customer to enter a secure session”, “receiving a desired PIN from the customer device”) associated with a payment device, which is grouped under the certain methods of organizing human activity – fundamental economic principles, practices or concepts; sales activity; following set of instructions; commercial or legal interactions (agreements in the form of contracts; business relations); managing interactions between people (including social activities, teachings, following rules or instructions), grouping, in step 2A prong one, inasmuch as the claimed method as a whole is directed towards setting means for identifying or verifying a financial-related instrument, involving steps which are nothing more than merely base on rules and instructions , but for the recitation of computer components.
Facilitating the setting of a code to enable accessing a financial-related instrument (e.g., card, account) associated with the customer-owner falls within the certain methods of organizing human activity grouping of abstract ideas. Other than the mere nominal recitation of the computer-related devices, nothing in the claim element precludes the steps from the organizing human interactions grouping. Accordingly, for these reasons, the claim recites an abstract idea.
Claim 8 recites:
“determining, by one or more processing circuits associated with a provider, that a personal identification number (PIN) has not been set for a new card to be provided to a customer;
generating, by the one or more processing circuits, a card mailer to accompany the new card when the new card is provided to the customer, wherein generating the card mailer comprises adding access information to the card mailer;
causing, by the one or more processing circuits, the generated card mailer to be provided to the customer, the card mailer comprising access information that provides a customer device of the customer access to enter a secure session to provide a desired PIN;
generating, by the one or more processing circuits, a system-generated PIN via a number generation process based on determining the customer has not accessed the secure session within a threshold time;
generating, by the one or more processing circuits, a system-generated PIN mailer comprising the system-generated PIN:
causing, by the one or more processing circuits, the system-generated PIN mailer to be provided to the customer; and
setting, by the one or more processing circuits, the PIN for the new card as the system-generated PIN.”
Based on the underlined elements above, abstract ideas and/or concepts are identified.
The steps merely comprise merely the use of rules and/or instructions to facilitate the activation/deactivation of a physical card comprising the steps of merely receiving/transmitting (“receiving … request to activate”), processing (“activating …; deactivating …”), verifying (“monitoring …”, “detecting … a deactivation condition …”) data/information associated with the occurrence of an event and/or transaction and, thus, do no more than add insignificant extra-solution activity to the judicial exception (see MPEP § 2106.05(g)). Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application because, when analyzed under step 2A prong two, the additional elements of the claim such as a “processing circuits”, “customer device”, represent the use of computer-related devices as an intermediary and/or tool to perform an abstract idea and/or does no more than generally
When analyzed under step 2B, 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 the use of rules and/or instructions to facilitate the activation/deactivation of a physical card comprising the steps of merely receiving/transmitting (“receiving … request to activate”), processing (“activating …; deactivating …”), verifying (“monitoring …”, “detecting … a deactivation condition …”) data/information associated with the occurrence of an event and/or transaction using computer computer-related technology and/or devices that merely perform as designed to function. 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)).
Hence, claim 8 is not patent eligible.
Independent claim 1 recites substantially the same limitations as claim 8 above and are ineligible for the same reasons. The subject matter of claim 1 corresponds to the subject matter of claim 8 in terms of a system (e.g., machine). Therefore the reasoning provided for claim 8 applies to claim 1 accordingly.
Independent claim 15 recites substantially the same limitations as claim 8 above and are ineligible for the same reasons. The subject matter of claim 15 corresponds to the subject matter of claim 8 in terms of a method (e.g., process). Therefore the reasoning provided for claim 8 applies to claim 15 accordingly.
Dependent claims 2-7, 9-14, and 16-20 add further details and contain limitations that narrow the scope of the invention. However, these details do not result in significantly more than the abstract idea itself. As explained in the December 16, 2014 Interim Eligibility Guidance from the USPTO (in reference to the BuySAFE, Inc. v. Google, Inc. decision), further narrowing the details of an abstract idea does not change the § 101 analysis since a more narrow abstract idea does not make it any less abstract.
Viewed individually and in combination, these additional elements do not provide meaningful limitations to transform the abstract idea such that the claims amount to significantly more than the abstraction itself.
Accordingly, the present pending claims are not patent eligible and are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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 of this title, 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.
Claims 1, 3-8, and 10-20 are rejected under 35 U.S.C. 103 as being unpatentable over Cook et al., US 11,551,200 B1 (“Cook”), in view of Moskowitz et al., US 10,956,881 B2 (“Moskowitz”), in view of Hurry, US 2018/0075450 A1 (“Hurry”), in view of Phillips et al., US 2021/0103961 A1 (“Phillips”).
Re Claim 1: (Currently Amended) Cook discloses a provider computing system associated with a provider, the provider computing system comprising:
one or more processing circuits including one or more processors and one or more memories having instructions stored thereon that, when executed, cause the one or more processing circuits to: (FIG. 1)
determine that a personal identification number (PIN) has not been set for a new card to be provided to a customer; (FIG’s 2, 5, 11; C1 L55-64; C2 L1-56; C11 L62-67; C12 L1-24)
Regarding the limitation comprising:
generate a card mailer to accompany the new card when the new card is provided to the customer,
Moskowitz teaches, in a related endeavor, wherein new card-related materials may be sent and received via mail or courier means (C6 L24-28: “The enrollment package 100 … which the consumer or user receives from his or her issuer FI, for example, via the U.S. mail or via courier at the consumer's home or residence”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Moskowitz with the invention of Cook as disclosed above for the motivation of transmitting sensitive documents/materials in a secure manner in order to mitigate the risk of fraudulent use.
Cook further discloses:
wherein generating the card mailer comprises adding access information to the card mailer; (C1 L55-64: “receiving … information embedded on the transaction card comprising a uniform resource locator (URL); responding, by the mobile device, to the received information by automatically displaying a web page associated with the URL; and providing, by the mobile device, an indication of an activation of the transaction card.”; C2 L1-56; C3 L1-54)
Regarding the limitation(s), Hurry teaches:
cause the generated card mailer to be provided to the customer, the card mailer comprising access information that provides a customer device of the customer access to enter a secure session to provide a desired PIN;
Hurry makes this teaching in a related endeavor ([0005]: “The method includes establishing, via a digital communication network, secure communication between the portable computing device and a remote institution. The method also includes receiving an entry of a new personal identification number via the portable computing device, and wirelessly transmitting the new personal identification
number to the payment device via the near field communication … The method also includes storing the personal identification number at the remote institution, and closing the communication between the portable computing device and the payment device once the new personal identification number is stored on the payment device.”; [0017] “… the application may be obtained in a variety of ways such as from an app store, from a web site, from a store WiFi system, etc.”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Hurry with the invention of Cook as disclosed above for the motivation of allowing sensitive data/information to be accessed in a secure manner.
Regarding the limitation(s) comprising:
generate a system-generated PIN via a number generation process based on determining the customer has not accessed the secure session within a threshold time;
Philllips teaches, in a related endeavor, wherein data/information pertaining to a new card is provided after a particular time period ([0017] “ The bank customer who is successfully verified may receive the secure object by courier at the remote location within a limited time period of the request”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Phillips with the invention of Cook as disclosed above for the motivation of ensuring that sensitive data/information is provided within a timely manner.
Regarding the limitation(s) comprising:
generate a system-generated PIN mailer comprising the system-generated PIN;
cause the system-generated PIN mailer to be provided to the customer;
Moskowitz teaches, in a related endeavor, wherein new card-related materials may be sent and received via mail or courier means (C6 L24-28: “The enrollment package 100 … which the consumer or user receives from his or her issuer FI, for example, via the U.S. mail or via courier at the consumer's home or residence”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Moskowitz with the invention of Cook as disclosed above for the motivation of transmitting sensitive documents/materials in a secure manner in order to mitigate the risk of fraudulent use.
Regarding the limitation comprising:
set the PIN for the new card as the system-generated PIN.
Hurry makes this teaching in a related endeavor ([0005]: “… method also includes receiving an entry of a new personal identification number via the portable computing device, and wirelessly transmitting the new personal identification number to the payment device via the near field communication … The method also includes storing the personal identification number at the remote institution, and closing the communication between the portable computing device and the payment device once the new personal identification number is stored on the payment device.”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Hurry with the invention of Cook as disclosed above for the motivation of allowing sensitive data/information to be accessed in a secure manner.
Re Claim 3: (Original) Cook in view of Moskowitz in view of Hurry in view of Phillips discloses the provider computing system of claim 1. Regarding the limitation feature(s) comprising:
wherein the instructions, when executed, further cause the one or more processing circuits to:
transmit an authentication request to the customer device;
receive authentication information from the customer device in response to the authentication request;
authenticate the customer based on the authentication information; and
allow the customer device to enter the secure session based on authenticating the customer.
Hurry makes this teaching in a related endeavor (Abstract; FIG. 4, FIG. 5; ¶¶[4, 5, 15, 17, 22, 26, 30, 31, 32, 35, 37, 38, 39}). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Hurry with the invention of Cook as disclosed above for the motivation of allowing an access code to be securely and conveniently updated/inputted by a user in a flexible manner.
Re Claim 4: (Currently Amended) Cook in view of Moskowitz in view of Hurry in view of Phillips discloses the provider computing system of claim 1. Cook further discloses:
wherein the access information comprises a website address, and wherein a request from the customer device to enter the secure session is received based on the customer device accessing the website address. (C2 L49-55: “Yet another embodiment relates to a method. The method includes receiving, via a contactless communication by a customer device from a transaction card, information from the transaction card, wherein the information comprises a customer-specific uniform resource locator (URL); and responding, by the customer device, to the customer-specific URL by displaying a website associated with the customer specific URL in order to activate the transaction card.”)
Re Claim 5: (Original) Cook in view of Moskowitz in view of Hurry in view of Phillips discloses the provider computing system of claim 1. Cook further discloses:
wherein the instructions, when executed, further cause the one or more processing circuits to:
determine that the customer device is an authorized device of the account associated with the new card; and
provide a prompt to the customer device based on determining that the customer device is the authorized device.
(C31 L5-34)
Re Claim 6: (Original) Cook in view of Moskowitz in view of Hurry in view of Phillips discloses the provider computing system of claim 5. Regarding the limitation feature comprising:
wherein the prompt includes a PIN request for the customer to provide the desired PIN, wherein the request from the customer device to enter the secure session is received in response to the prompt.
Hurry makes this teaching in a related endeavor (Abstract; FIG. 4, FIG. 5; ¶¶[4, 5, 15, 17, 22, 26, 30, 31, 32, 35, 37, 38, 39}). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Hurry with the invention of Cook as disclosed above for the motivation of allowing an access code to be securely and conveniently updated/inputted by a user in a flexible manner.
Re Claim 7: (Original) Cook in view of Moskowitz in view of Hurry in view of Phillips discloses the provider computing system of claim 6. Cook further discloses:
wherein providing the prompt to the customer device comprises pushing the prompt to the customer device.
(FIG’s 2, 5, 11; C1 L55-64; C2 L1-56; C11 L62-67; C12 L1-24)
Re Claim 8: (Currently Amended) Claim 8, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 1. Accordingly, claim 8 is rejected in the same or substantially the same manner as claim 1.
Re Claim 10: (Currently Amended) Claim 10, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 3. Accordingly, claim 10 is rejected in the same or substantially the same manner as claim 3.
Re Claim 11: (Original) Claim 11, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 3. Accordingly, claim 11 is rejected in the same or substantially the same manner as claim 3.
Re Claim 12: (Currently Amended) Claim 12, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 5. Accordingly, claim 12 is rejected in the same or substantially the same manner as claim 5.
Re Claim 13: (Original) Claim 13, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 6. Accordingly, claim 13 is rejected in the same or substantially the same manner as claim 6.
Re Claim 14: (Original) Claim 14, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 7. Accordingly, claim 14 is rejected in the same or substantially the same manner as claim 7.
Re Claim 15: (Currently Amended) Claim 15, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 1. Accordingly, claim 15 is rejected in the same or substantially the same manner as claim 1.
Re Claim 16: (Currently Amended) Claim 16, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 3. Accordingly, claim 16 is rejected in the same or substantially the same manner as claim 3.
Re Claim 17: (Original) Claim 17, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 4. Accordingly, claim 17 is rejected in the same or substantially the same manner as claim 4.
Re Claim 18: (Currently Amended) Claim 18, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 5. Accordingly, claim 18 is rejected in the same or substantially the same manner as claim 5.
Re Claim 19: (Original) Claim 19, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 6. Accordingly, claim 19 is rejected in the same or substantially the same manner as claim 6.
Re Claim 20: (Original) Claim 20, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 7. Accordingly, claim 20 is rejected in the same or substantially the same manner as claim 7.
Claims 2 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Cook et al., US 11,551,200 B1 (“Cook”), in view of Moskowitz et al., US 10,956,881 B2 (“Moskowitz”), in view of Hurry, US 2018/0075450 A1 (“Hurry”), in view of Phillips et al., US 2021/0103961 A1 (“Phillips”), as applied to claims 1, 3-8, and 10-20 as described above, further in view of Seal, US 12,045,831 B2 (“Seal”).
Re Claim 2: (Currently Amended) Cook in view of Moskowitz in view of Hurry in view of Phillips discloses the provider computing system of claim 1. Cook doesn’t explicitly disclose:
wherein the secure session is a secure online session, wherein the access information comprises a scannable code, and wherein a request from the customer device to enter the secure online session is received based on the customer device scanning the scannable code.
Seal, however, makes this teaching in a related endeavor (FIG. 6; FIG. 7; C1 L65-67; C2 L1-63; C4 L1-24). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Seal with the invention of Cook as disclosed above for the motivation of
Re Claim 9: (Currently Amended) Claim 9, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 2. Accordingly, claim 9 is rejected in the same or substantially the same manner as claim 2.
Conclusion
The prior art(s) made of record and not relied upon is/are considered pertinent to applicant's disclosure.
Thornton et al. (US 2017 /0124566 A1) discloses pin-based payment confirmation. The present disclosure involves a method of operating a payment platform. The method includes receiving a request to authenticate a first party from a second party. The method includes determining whether the first party has an account with the payment platform and a communications device associated with the account. The method includes generating a secret code in response to the determining. The method includes sending the secret code to the communications device of the first party. The method includes prompting the first party to input the secret code. The method includes authenticating the first party based on the input from the first party.
Classen et al. (US 2021/0133747 A1) discloses systems and methods for authentication using a dynamic personal identification number. Methods and systems are provided herein for authenticating
account holders using dynamic PINs. The methods may include receiving a transaction request from a vendor with the transaction request including a security number. The security number may be associated with an account holder. A dynamic PIN may be generated based at least in part on the time. The method may match the dynamic PIN to the security number associated with the account holder. The method may also include approving the transaction request from the vendor in response to the dynamic PIN matching the security number associated with the account holder. The method may further include the steps of generating a block including transaction information in response to the transaction request, broadcasting the block to a network for approval, adding the block to a blockchain in response to the approval, and generating the dynamic PIN.
Claims 1-20 are rejected.
Applicant’s amendment necessitated the ground(s) 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 Clifford Madamba whose telephone number is 571-270-1239. The examiner can normally be reached on Mon-Thu 7:30-5:00 EST Alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan Donlon, can be reached at 571-272-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CLIFFORD B MADAMBA/Primary Examiner, Art Unit 3692
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