DETAILED ACTION
Status of Claims
1. This office action is in response to amendment filed 12/3/2025.
2. Claims 1-20 are pending.
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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20
Claims 1-20 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The following amendment filed 12/3/2025 are not adequately supported by the original disclosure and are hence rejected as new matter:
“a secure element comprising a second processor and a second memory”
Examiner notes that, as per Fig. 1A, at most the first secure element 165 resides inside the first client device 106 whereas the second secure element 168 resides inside the second client device 109. But neither the specification nor the drawings support a secure element comprising a second processor and second memory.
As per para [0027], the first client device 106 and the second client device 109 can have a first secure element 165 and the second secure element 168, respectively. The first secure element 165 and the second secure element 168 can be implemented as a hardware component, as a software component, or a combination of hardware and software. The first secure element 165 and the second secure element 168 comprise a computing device that is tamper resistant, in which the computing device includes a processor and memory. As per para [0091], a number of software components previously discussed are stored in the memory of the respective computing devices and are executable by the processor of the respective computing devices. Thus, Examiner finds that as per the original disclosure, the first secure element and the second secure element comprise a computing device (which has its own processor and memory); however, there is no explicit or implicit support for the secure element comprising a second processor and a second memory.
Applicant is therefore requested to either provide support for the above limitation or else cancel the new matter.
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
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: Claims 1-7 are directed to a system; claims 8-14 are directed to a method; claims 15-20 are directed to a non-transitory computer-readable medium – each of which is one of the statutory categories of inventions.
Step 2A: A claim is eligible at revised Step 2A unless it recites a judicial exception and the exception is not integrated into a practical application of the application.
Prong 1: Prong One of Step 2A evaluates whether the claim recites a judicial exception (an abstract idea enumerated in the 2019 PEG, a law of nature, or a natural phenomenon).
Groupings of Abstract Ideas:
I. MATHEMATICAL CONCEPTS
A. Mathematical Relationships
B. Mathematical Formulas or Equations
C. Mathematical Calculations
II. CERTAIN METHODS OF ORGANIZING HUMAN ACTIVITY
A. Fundamental Economic Practices or Principles (including hedging, insurance, mitigating risk)
B. Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)
C. Managing Personal Behavior or Relationships or Interactions between People (including social activities, teaching, and following rules or instructions)
III. MENTAL PROCESSES.
Concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
See MPEP 2106.04 (a) (2) Abstract Idea Groupings [R-10.2019]
Examiner notes that concepts recited in the independent claims 1, 8 and 15 – receive a request from a wallet application to generate a sub-payment key, the request comprising a key restriction; generate the sub-payment key based at least in part on a payment key and the key restriction; and return the sub-payment key to the wallet application – constitutes Certain Methods of Human Activity which is an abstract idea.
The dependent claims merely limit the abstract idea to – type of key restriction; generate application transaction counter based on number of permitted transactions; starting and ending value for ATC, sub-application transaction counter; types of sub-payment key restrictions – that also constitute Certain Methods of Human Activity.
Hence under Prong One of Step 2A, the claims recite a judicial exception.
Prong 2: Prong Two of Step 2A evaluates whether the claim recites additional elements that integrate the judicial exception into a practical application of the exception.
Limitations that are indicative of integration into a practical application include:
Improvements to the functioning of a computer or to any other technology or technical field – see MPEP § 2106.05(a)
Applying the judicial exception with, or by use of, a particular machine –see MPEP § 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing – see MPEP § 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception – see MPEP §2106.05(e)
Limitations that are not indicative of integration into a practical application include:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea – see MPEP § 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception – see MPEP § 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP § 2106.05(h)
Additional element(s) recited in the claims, beyond the abstract idea, include: a system comprising a computing device, a secure element comprising a processor and a memory; wallet application; non-transitory computer-readable medium. Examiner finds that the additional elements have been recited at a high level of generality such that the claim limitations amount to no more than mere instructions to apply the exception using generic components. See MPEP 2106.05(f).
The combination of additional elements does not purport to improve the functioning of a computer or effect an improvement in any other technology or technical field. Instead, the additional elements do no more than use the computer as a tool to perform an abstract idea and/or link the use of the judicial exception to a particular technological environment or field of use. The focus of the claims is not on improvement in computers, but on certain independently abstract ideas – receive a request from a wallet application to generate a sub-payment key, the request comprising a key restriction; generate the sub-payment key based at least in part on a payment key and the key restriction; and return the sub-payment key to the wallet application – that merely uses a mobile device as a tool. Steps that do no more than spell out what it means to “apply it on a computer” cannot confer patent eligibility. Indeed, nothing in claim 1 improves the functioning of the computer, makes it operate more efficiently, or solves any technological problem. See Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384-85 (Fed. Cir. 2019).
Hence, under Prong Two of Step 2A, the additional elements individually or in combination, do not integrate the judicial exception into a practical application.
Step 2B:
In Step 2B, the evaluation consists of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception.
As discussed in Prong Two, the additional elements in the claims amount to no more than mere instructions to apply the exception using generic computer components, which is insufficient to provide an inventive concept.
See MPEP 2106.05(f) Mere Instructions To Apply An Exception [R-10.2019].
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.
When considered individually or as an ordered combination, the additional elements fail to transform the abstract idea of – receive a request from a wallet application to generate a sub-payment key, the request comprising a key restriction; generate the sub-payment key based at least in part on a payment key and the key restriction; and return the sub-payment key to the wallet application – into significantly more.
Hence, the claims are ineligible under Step 2B.
Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to a judicial exception without significantly more.
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.
Claims 1, 2, 5, 6, 8, 9, 13, 15, 16, 20
Claims 1, 2, 5, 6, 8, 9, 13, 15, 16, 20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Wong (US 2017/0337549 A1) in view of Collinge et al. (US20180025353A1).
Claim 1.
A system, comprising:
a computing device comprising a first processor, a first memory and a secure element, the first memory comprising a wallet application;
(See Wong: Para [0054] (“secure element”)
a secure element comprising a second processor and a second memory; and
(See Collinge: Para [0033] (“secure elements”)
machine-readable instructions stored in the second memory that, when executed by the second processor, cause the secure element to at least:
establish an authenticated session with the wallet application;
(See Collinge: Para [0053] (“An issuer or wallet provider (i.e., mobile payment application provider) that is willing to extend the end-to-end protection of transaction session keys may consider WBC as an option to improve the security level of Cloud-based payment system and use its own customized version of a software development kit (SDK). The objective is to reduce the exposure of the transaction keys in the user domain 200 and leverage from WBC executed in the user domain 200 to decrypt keys and generate transaction cryptograms using a process implemented in a WBC component. In this case, the CMS would need to know the value of a transport key (AES) shared between the WBC component of the wallet and the CMS. The customized version of the CMS-D will need to encrypt the transaction session keys and these encrypted keys would be delivered to the wallet using the improved mechanisms described herein. In this example, the WBC component in the wallet may implement a sequence of operations using a single call to the WBC component in order to decrypt the encrypted transaction session keys and keep the ephemeral value of the transaction session keys and generate the transaction cryptograms using the transaction session keys.”)
receive, via the authenticated session, receive a request from the wallet application executed on the computing device to generate a sub-payment key, the request comprising a key restriction;
(See Wong: Para [0010] (“According to some embodiments of the invention, a server computer receives a request for a first token from a communication device. The request includes a second token and data associated with the second token.”)
generate the sub-payment key based at least in part on a payment key stored in the secure element and the key restriction; and
(See Wong: Para [0020] (“According to one embodiment of the invention, a subtoken corresponding to a primary token is generated. The primary token corresponds to a credential. The credential may be, for example, a primary account number (PAN) corresponding to a payment account. The subtoken may be a temporary, one-time use subtoken based on a primary token associated with the credential that allows a user to conduct a transaction from his or her account, while still providing security for the user's sensitive data.”)
return the sub-payment key to the wallet application.
(See Collinge: Para [0043] (“Also, the mobile key MAC (ksMkMac) may be allowed to generate the MAC mobile session keys that are returned to the mobile payment application 210 executing in the user domain 200 during a payment process.”)
Therefore, it would have been obvious to a person having ordinary skills in the art before the effective filing date of the invention to modify the above noted disclosure of Wong as it relates to payment tokens to include the above noted disclosure of Collinge Brickell as it relates to end to end key management. The motivation for combining the references would have been to use a credential management system for managing tokens.
Claims 8, 15 are similar to claim 1 and hence rejected on similar grounds.
Claim 2:
wherein the key restriction is a quantity of transactions permitted by an account holder.
(See Wong: Para [0085])
Claims 9, 16 are similar to claim 2 and hence rejected on similar grounds.
Claim 5:
wherein the machine-readable instructions that generate the sub-payment key further cause the secure element to at least:
encrypt the sub-payment key using an encryption key.
(See Collinge: Para [0050])
Claim 6:
wherein the sub-payment key comprises the key restriction, the key restriction comprising at least one of a category restriction parameter, a single transaction limit restriction parameter, or a date restriction parameter.
(See Wong: Para [0092])
Claims 13, 20 are similar to claim 6 and hence rejected on similar grounds.
Claims 3, 4, 7, 10, 12, 17, 19
Claims 3,4, 7, 10, 12, 17, 19 are rejected under 35 U.S.C. 103(a) as being unpatentable over Wong (US 2017/0337549 A1) in view of Collinge et al. (US20180025353A1) further in view of Brickell et al. (US20150120556A1).
Claim 3:
The combination of Wong + Collinge does not specifically disclose:
wherein generating the sub-payment key further causes the secure element to at least:
generate an application transaction counter range based at least in part on the quantity of transactions permitted by the account holder.
However, Brickell discloses the above limitation.
(See Brickell: Para [0053] (“In this embodiment, new limited use financial account information is created at pre-defined intervals (for example, after 24 hours expires) or upon a triggering event”)
Therefore, it would have been obvious to a person having ordinary skills in the art before the effective filing date of the invention to modify the combination of Wong + Collinge to include the above noted disclosure of Brickell as it relates to securing payment with application transaction counters. The motivation for combining the references would have been to use proxy account information instead of tokens.
Claims 10, 17 are similar to claim 3 and hence rejected on similar grounds.
Claim 4:
wherein the sub-payment key comprises a starting value for the ATC range and an ending value for the ATC range.
(See Brickell: Para [0056])
Claims 11, 18 are similar to claim 4 and hence rejected on similar grounds.
Claim 7:
wherein the sub-payment key and a sub-application transaction counter for the sub-payment key are stored in application data for the secure element, the sub-application transaction counter maintaining a count of a quantity of transactions completed using the sub-payment key.
(See Brickell: Para [0058])
Claim 12:
wherein the secure element comprises an application transaction counter for the payment key and a sub-application transaction counter for the sub-payment key.
(See Brickell: Para [0059])
Claim 19 is similar to claim 5 and hence rejected on similar grounds.
Response to Arguments
Applicant's arguments filed 12/3/2025 have been fully considered but they are not persuasive.
101
Applicant argues, citing para [0017] of the specification, that the technical solution recited in the claims amount to improvement in mobile payment systems being able to make contactless payments.
In response, Examiner first notes that contactless payment in the US had its early beginnings in 1997 and thus predates the present invention by more than two decades. See NPL Federal Reserve. Secondly, the pending claims do not exactly describe contactless payment much less any improvement in contactless payments, but merely the steps of receiving a request and generating a payment key from a wallet session comprising a key restriction – which is a Certain Method of Organizing Human Activity as opposed to being a technical solution to a technical problem.
In response to applicant’s argument, citing para [0012] of the specification, that the embodiments related to generating a sub-payment token for use by a second client device without the involvement of a backend server, Examiner notes that a) the claims do not recite a second client device; b) it is not clear how the token is sent from one device to another without the involvement of a backend server; c) sending a token from one device to another to a user device is mere data transferring or data gathering activity that does not constitute technical improvement. Indeed, nothing in claim 1 improves the functioning of the computer, makes it operate more efficiently, or solves any technological problem. See Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384-85 (Fed. Cir. 2019).
The combination of limitations does not bring about (i) an improvement to the functionality of a computer or other technology or technical field; (ii) a “particular machine” to apply or use the judicial exception; (iii) a particular transformation of an article to a different thing or state; or (iv) any other meaningful limitation. See MPEP 2106.05(a)-(c), (e)-(h). Hence, the additional elements fail to integrate the abstract idea into a practical application or provide significantly more. See MPEP 2106.05(f).
103
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new 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 nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARUNAVA CHAKRAVARTI whose telephone number is (571)270-1646. The examiner can normally be reached 9 AM - 5 PM ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan Donlon can be reached at 571-270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ARUNAVA CHAKRAVARTI/Primary Examiner, Art Unit 3692