DETAILED ACTION
Status of Claims
This office action is a follow-up to the Notice of Withdrawal from Issue mailed 18 August 2026. Claims filed on 02 April 2026 are under examination. Claims 1-4, 6-10, 12-16 and 18 remain pending. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(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.
Claim 1, 7 and 13 are rejected under 35 U.S.C. 112(a) 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, at the time the application was filed, had possession of the claimed invention.
Regarding claims 1, 7 and 13, citing the representative limitations:
determining that the authentication information originates from the customer device; and
upon said determining that the authentication information originates from the customer device, and the authentication matches an expected value, authorizing the customer transaction.
The applicant points to paragraph 69 (see remarks on 4/2/2026 on page 8) for support of the claim limitation.
[00069] In embodiments, verification information may include information that may assist a customer in making an informed decision as to the security, fraud or other risks of a particular transaction and with determining if the customer or customer device 150 should provide or cause to be provided the authentication information. In embodiments, verification information may include information about the transaction (such as the goods or services involved and the price of each), information about the merchant (such as the identity and location of the merchant), information about the POS device 152 and/or merchant device 102 (such as the expected location of the device and whether the device has been modified, tampered with or jailbroken) and a security, fraud or other risk rating.
While this paragraph teaches "determining if the customer or customer device 150 should provide or cause to be provided the authentication information." (emphasis added), it does not teach an actually "determining that the authentication information originates from the customer device" and "upon said determining ...authorizing the customer transaction." as claimed. Therefore, the claim should be rejected under 35 USC 112(a), for lack of written description.
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, 6-10, 12-18 and 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.
Under Step 1 of the analysis, claim 1 belongs to a statutory category, namely it is a method claim.
in prong one of step 2A (See MPEP 2106 Patent Subject Matter Eligibility [R-10.2019]). Claim 1 recites:
A computer-implemented method comprising:
receiving a message based on a transaction identifier from a customer device, 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 an expected 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 to allow the customer device to present a geographic map illustrating the location of the POS device to obtain confirmation of the transaction;
receiving authentication information;
determining that the authentication information originates from the customer device; and
upon said determining that the authentication information originates from the customer device, and the authentication matches an expected value, authorizing the customer transaction.
The claim limitations in the abstract idea have been highlighted in bold above; the remaining limitations are “additional elements.”
Under Step 2A, prong 1: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim.
In the instant case, claim 1 is found to recite at least one judicial exception (i.e. abstract idea), that being a mental process because these limitations are merely data observations, evaluations, and/or judgements in order to reduce the risk of a transaction and is capable of being performed mentally and/or with the aid of pen and paper. Claim 1 is also found to be a method of mitigating risk, which is a fundamental economic practice which is a method of organizing human activity.
Step 2A, prong 2 (See MPEP 2106.04(d) Integration of a Judicial Exception Into A Practical Application [R-07.2022]) of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception(s) into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application.
In addition to the abstract ideas recited in claim 1, the claimed method recites additional elements including:
the customer device,
the point of sale device, and
the customer device to present a geographic map.
However, these elements do not amount to a practical application of the abstract idea. This is because the customer device and the point of sale device, amount to merely applying the abstract idea of reducing risk of a transaction to a computing environment using a user device and a point of sale device. Further, the “allow the customer device to present a geographic map” amounts to merely generally linking the abstract idea to the technical environment, because merely “allow” does not meaningfully limit the claim.
Thus, under Step 2A, prong 2 of the analysis, even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application, and the claim is directed to the judicial exception. No specific practical application is associated with the claimed method.
When analyzed under step 2B (See MPEP 2106.05 Eligibility Step 2B: Whether a Claim Amounts to Significantly More [R-07.2022]), the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, as described above with respect to Step 2A Prong 2, merely amount to a general-purpose computer system that attempts to apply the abstract idea in a technological environment, and generally linking abstract idea to a particular field of use.
Similarly, under Step 2B, when analyzed as individual elements, and as a combination, the method of claim 1 also amounts to merely “apply it” and “generally link” under the same rationales concluded above and therefore do not amount to significantly more than the abstract idea itself.
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.
Conclusion
The prior art of record and not relied upon is considered pertinent to Applicant’s disclosure:
Albisu: “Mobile Payment Using Picture Messaging”, (US Pub. No. 20120054046 A1).
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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/EDWARD J BAIRD/Primary Examiner, Art Unit 3692
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