DETAILED ACTION
Status of Claims
Applicant has amended claims 1, 7 and 13. No claims have been added or canceled. Thus, claims 1-18 remain pending in this application. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments and amendments filed on 27 November 2025 with respect to:
double patenting rejection;
rejection to claims 1-18 under U.S.C. § 101,
rejections of claims 1-18 under 35 U.S.C. § 102(a)(1) as being anticipated by Botros et al (US Pub. No. 20180268408 A1)
have been fully considered. Amendments to claims have been entered.
Examiner acknowledges Applicant’s filing a terminal disclaimer to obviate double patenting rejection over US Patent No. 12,045,831. Accordingly, Examiner withdraws double patenting rejection.
Examiner acknowledges amendments to, and arguments regarding claims to overcome 35 U.S.C. § 101 rejection. However, arguments are not persuasive.
Applicant argues subject matter eligibility under Step 2A – Prong One contending that the claims are directed to a method of determining the source of authentication information which is not an abstract idea as "methods of organizing human activity".[remarks page 6]. Examiner respectfully disagrees.
Examiner maintains the claimed invention is directed to commercial interactions as well as mitigating risk, which are both grouped under methods of organizing human activities. As claimed, information indicating a geographic location of the POS device does not make the method of determining the source of authentication information any less abstract. Terms such as “authentication information” is recited at a high level of generality which do not make the claims less abstract.
Applicant argues subject matter eligibility alleging that the claims are directed to a practical application, namely the improvement in security to transactions with POS devices [remarks page 8]. These “improvements” are reflected:
by providing the customer device with verification information which indicates a location of the POS device, and
by subsequently determining that the authentication information originates from the customer device
[remarks page 9]. Examiner respectfully disagrees.
In view of Prong Two of Step 2A– i.e. practical application to a judicial exception – limitations that are indicative of integration into a practical application:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a),
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo,
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) and Vanda Memo
Examiner maintains that the claimed invention does not contain any of these aforementioned limitations.
Limitations that are not indicative of integration into a practical application:
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).
Examiner maintains that the claimed invention are merely uses a computer as a tool to perform an abstract idea. The claims are recited at a high level of generality and, as such, do not convey a practical application of an abstract idea or an improvement in technology.
Further, Applicant’s statement that “This allows the customer to avoid fraudulent transactions, and allows the customer to avoid entering a PIN on a POS device” [remarks page 9] is not persuasive in that this is not reflected in they claim language . A best, “allowing the customer to avoid fraudulent transactions …” is a statement of intended use which does not further limit the claim.
Rejections have been clarified herein in view of the claim amendments and the January 2019 Patent Subject Matter Eligibility Guidance – 2019 PEG.
Applicant's arguments filed with respect to claims regarding the 35 U.S.C. § 102(a)(1) rejections have been fully considered but they are moot in view of new ground(s) of rejection.
If, in the opinion of the Applicant, a telephone conference would expedite the prosecution of the subject application, the Applicant is encouraged to contact the undersigned Examiner at the phone number listed below.
Priority
This application, filed on 20 June 2024 is a continuation of application 17/850,382, filed on 27 June 2022 and is now US Patent No. 12,045,831. Application 17/850,382 is a continuation of application 16/290,825, filed on 01 March 2019 and is now US Patent No. 11,403,646. Accordingly, this application is given priority from 01 March 2019.
Claim Interpretation
Regarding claims 1-18, clauses such as “to allow the customer device” and “to present a geographic map illustrating the location of the POS device to obtain confirmation of the transaction” in representative claim 1 are merely statements of intended use which do not affect the method step of “providing the verification information to the customer device”. Similar phrasing will be interpreted accordingly.
A recitation of intended use or purpose of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use or fulfilling said purpose, then it meets the claim.
The subject matter of a properly construed claim is defined by the terms that limit its scope. It is this subject matter that must be examined. As a general matter, the grammar and intended meaning of terms used in a claim will dictate whether the language limits the claim scope. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. The following are examples of language that may raise a question as to the limiting effect of the language in a claim:
(A) statements of intended use or field of use,
(B) "adapted to" or "adapted for" clauses,
(C) "wherein" clauses, or
(D) "whereby" clauses.
This list of examples is not intended to be exhaustive. See also MPEP § 2111.04.
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 1-18 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.
In the instant case, claims 1-6 are directed to a “method” which is one of the four statutory categories of invention.
Claims are directed to the abstract idea of determining the source of authentication information which is grouped under mitigating risk as well as commercial interactions which is a method of organizing human activity.
in prong one of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register, Vol. 84, No. 5, p.p. 50-57 (Jan. 7, 2019))). Claims recite:
receiving a message based on a transaction identifier, the transaction identifier corresponding to a customer transaction involving a point of sale (POS) device;
responsive to receiving the message, generating verification information including location information corresponding to a location of the POS device;
providing the verification information to the customer device, wherein the verification information includes information indicating a geographic location of the POS device;
receiving authentication information; and
determining that the authentication information originates from the customer device.
Limitations such as:
to allow the customer device to present a geographic map illustrating the location of the POS device to obtain confirmation of the transaction
are merely statements of intended use which do not further limit the limitation “providing the verification information to the customer device”..
Accordingly, the claim recites an abstract idea (See 2019 Revised Patent Subject Matter Eligibility Guidance).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional elements of the claim such as a customer device and a point of sale device represent the use of a computer as a tool to perform an abstract idea and do no more than generally apply the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. automate) the acts of “collecting information, analyzing the information and providing the results of the analysis”.
When analyzed under step 2B (See 2019 Revised Patent Subject Matter Eligibility Guidance), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself because the ordered combination does not offer substantially more than the sum of the functions of the elements when each is taken alone.
The computer and computer program instructions are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, is merely the combined and coordinated execution of generic computer functionalities. These functionalities are well-understood, routine and conventional activities previously known to the industry. 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)).
Thus, viewed as a whole, the combination of elements recited in the claims merely describe the concept of determining the source of authentication information using computer technology (e.g. the processor).
Hence, claims are not patent eligible.
Dependent claims 2-6 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to a judicial exception (Step 2A- Prong One). Nor are the claims directed to a practical application to a judicial exception (Step 2A- Prong Two).
For example, claims 3, 5 and 6 are silent as to “additional elements” which integrate the abstract idea into a practical application of a judicial exception, or that are sufficient to amount to significantly more than the judicial exception. They merely further describe the abstract idea of determining the source of authentication information.
In claims 2 and 4, the features:
a QR code, a near field communication and a push notification; and
a biometric measure;
add technology to the abstract idea of the independent claim. However, each of these components is a generic technological component, and its use is in its normal, expected, and routine manner. The components are recited at a high level of generality which do not improve another technology or technical field nor the functioning of the computer itself.
Accordingly, none of the dependent claims add a technological solution to the method of organizing human activity in the independent claim.
Note: The analysis above applies to all statutory categories of invention. As such, the presentment of claims 7-12 otherwise styled as a device, and claims 13-18 styled as a computer readable medium would be subject to the same analysis.
Conclusion
The claims as a whole do not amount to significantly more than the abstract idea itself. This is because the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
Claim Rejections - 35 USC § 103
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.
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Botros et al (US Pub. No. 20180268408 A1) in view of Huxham et al (US Pub. No. 20140188738 A1).
Regarding claims 1, 7 and 13, Botros teaches a POS device which may be programmed to implement a cardholder verification method (CVM) that specifies the POS device to request verification information from a customer engaging in a transaction at the POS device, where the verification information or request for verification information that [sic] is specific to the customer, transaction or an attribute of the payment instrument. [0010]. He teaches:
receiving a message based on a transaction identifier …, the transaction identifier corresponding to a customer transaction involving a point of sale (POS) device – [0047] “can obtain payment transaction information describing the transaction, such as the attribute or identifier of the payment instrument,”;
responsive to receiving the message, generating verification information including location information corresponding to a location of the POS device – [0017] and [0084];
providing the verification information to the customer device, wherein the verification information includes information indicating a geographic location of the POS device – [0084] “detecting, by the POS device, a location of the POS device or one or more communication devices, wherein the location indicates a current location of the payment transaction;” to allow the customer device to present a geographic map illustrating the location of the POS device to obtain confirmation of the transaction – not further limiting in that this is intended use language;
receiving authentication information – [0017]; and
determining that the authentication information originates from the customer device – [0019] “authentication method, e.g., geo-location, biometric input, one time password or text message, etc.”.
Botros discloses initiating contactless payment transactions using a mobile device [0025]. Botros does not explicitly disclose:
receiving a message based on a transaction identifier from a customer device (emphasis added), the transaction identifier corresponding to a customer transaction involving a point of sale (POS) device.
However, Huxham teaches a mobile banking system that uses a cryptographic expansion device attached to a communication component of a mobile device and a secure gateway device to enable end-to-end secure communications between the mobile device and a payment processing network [0008]. He teaches a user message or a "transaction request message" that originates from a user device to initiate a mobile banking transaction [0031]. A transaction request message can include a transaction identifier identifying the type of transaction (e.g., account inquiry, payment, etc.), account information (e.g., account information of a user and/or a merchant or payee, etc.), transaction information (e.g., transaction amount, time of transaction, location, etc.), device and/or user information (e.g., mobile phone number, mobile device identifier, mobile subscriber information), and/or other types of information that is used for conducting a mobile banking transaction [Id.]. He teaches a mobile device communicating with a contactless reader enabled point-of-sale (POS) terminal at a merchant using Near Field Communication (NFC) communications [0037].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Botros’ disclosure to include transaction request message originating from a user device as taught by Huxham since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding claims 2, 8 and 14, Botros teaches the transaction identifier being a push notification – [0036].
Regarding claims 3, 9 and 15, Botros teaches the verification information as further including a list of goods and services – [0023] and [0024].
Regarding claims 4, 10 and 16, Botros teaches the authentication information as comprising a biometric measure – [0019].
Regarding claims 5, 11 and 17, Botros teaches, upon said determining that the authentication information originates from the customer device, and the authentication matches an expected value, authorizing the customer transaction – [0015].
Regarding claims 6, 12 and 18, Botros teaches the expected value being selected on the basis of a risk-rating of the customer transaction – [0055] “The rules engine 123 may also apply a risk analysis, for example in real-time, based on anomalies in behavior of the customer or the device associated with the customer”.
Conclusion
The prior art of record and not relied upon is considered pertinent to Applicant’s disclosure:
Dai: “Secured Mobile Transaction Device”, (US Pub. No. 20110191161 A1)
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 EDWARD J BAIRD whose telephone number is (571)270-3330. The examiner can normally be reached 7 am to 3:30 pm M-F.
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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.
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/EDWARD J BAIRD/Primary Examiner, Art Unit 3692