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 .
Election/Restriction
Claims 16-18 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected sub-combination II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2025-10-01. Applicant’s election without traverse of claims 1-15 in the reply filed on 2025-10-01 is acknowledged.
Status of Claims
Claims 1 - 15 are currently pending and examined.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Regarding claim 1, 3, 6, and 8-13, the term " secure element " acts as a generic placeholder for the term “means”. The generic placeholder “secure element” is modified by functional language “. . . splitting. . . sending” in claim 1, “. . . the first secure element provides a registration request for registering the generated electronic second-type token. . .” in claim 3, “the number of electronic second-type tokens generated by the first secure element” in claim 6, “wherein the electronic second-type token comprises a private value of a token element pair” in claim 8, “the secure element comprises an electronic first-type token having a monetary value.” in claim 9, “wherein the secure element is a provisioning secure element of a service provider unit in the transaction system” in claim 10, “merging the one or more second-type token with another second-type token managed by the secure element . . .” in claim 11, “the second secure element compares the private value.” in claim 12, and “wherein a negotiation step between the secure element and the second secure element is performed” in claim 13. Further, the generic placeholders are not modified by sufficient structure, material, or acts for performing the claimed functions. The structures corresponding to the “secure element” may be found in at least in paragraph 0018 of Applicant’s specification (“Since a secure element is a computing device ...”).
Regarding claims 3, 8, and 14-15, the term " token register " acts as a generic placeholder for the term “means”. The generic placeholder “token register” is modified by functional language “. . . registering the generated electronic second-type token in a token register of the transaction system” in claim 3, “. . . wherein a token reference stored in a token register comprises a public value of the token element pair. . .” in claim 8, “wherein the token register registers electronic first-type tokens and electronic second-type tokens of the electronic payment transaction system” in claim 14, “the token register replaces the registration of the registered electronic first-type token by a registration of one or more requested electronic first-type toke” in claim 15, “a token register, configured to register first-type token and second-type token, preferably based on corresponding token references.” Further, the generic placeholders are not modified by sufficient structure, material, or acts for performing the claimed functions. Specifically, the claims and specification are both silent with respect to any structure corresponding to the generic placeholder “token register”.
However, for the purposes of compact prosecution, the office will interpret “token register” as a “computing device”; the office notes that Applicants specification does not provide support for such an interpretation.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 3-8, and 14-15 are 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Means-Plus-Function
Claims 3, 8, and 14-15 invoke 35 U.S.C. 112(f) interpretation (see Claim Interpretation section). A means- (or step-) plus-function limitation that is found to be indefinite under 35 U.S.C. 112(b) based on failure of the specification to disclose corresponding structure, material or act that performs the entire claimed function also lacks adequate written description (see MPEP 2181(IV)). Claims 3, 8, and 14-15 are found to be indefinite under 35 U.S.C. 112(b), therefore the claims are also rejected under 35 U.S.C. 112(a) for lacking adequate written description.
The following is a quotation of the first paragraph of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3-8, and 11-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Lack of Antecedent Basis
Claim 7 recites "the service provider unit" without proper antecedent basis. Therefore, the claim is indefinite and rejected under 35 U.S.C. 112(b) or pre-AlA 35 U.S.C. 112, second paragraph.
Claims 3, 5, and 10 recite "the transaction system" without proper antecedent basis. Therefore, the claim is indefinite and rejected under 35 U.S.C. 112(b) or pre-AlA 35 U.S.C. 112, second paragraph.
Claims 11 and 12 recite "the private value(s)" without proper antecedent basis. Therefore, the claim is indefinite and rejected under 35 U.S.C. 112(b) or pre-AlA 35 U.S.C. 112, second paragraph.
Claim 13 is also rejected as it depends from a rejected claim.
Means-Plus-Function
Claims 3, 8, and 14-15 invoke 35 U.S.C. 112(f) interpretation (see Claim Interpretation section). To satisfy the definiteness requirement under 35 U.S.C. 112(b) or 35 U.S.C. 112, second paragraph, the written description must clearly link or associate the corresponding structure, material, or acts to the claimed function (see MPEP 2181(III)). Here, the claims and specification are both silent with respect to any specific structure corresponding to the generic placeholder “token register”. Therefore, these claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Unclear Scope
Claims 9-13 are directed to a secure element. Claim language in a product claim is language that limits a claim to a particular structure of the “secure element” (See MPEP 2103(I)(C)). The claims only recite ‘secure element’ functionality (e.g. ‘providing’, ‘generate’, ‘split’, and ‘send’ in claim 9), without reciting any discrete physical structures. Thus, it is unclear what discrete physical structures the secure element comprises. Claims 10-13 recite similar language, without reciting any discrete physical structures. Therefore, these claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claims 10-13 are also rejected per dependency upon a rejected claim.
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 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-8
Step 1
Claims 1-8 are directed to a computer-implemented method (i.e., process). Therefore, these claims fall within the four statutory categories of invention, and thus must be further analyzed at Step 2A to determine if the claims are directed to a judicial exception (See MPEP 2106.03, subsection II).
Step 2A Prong One
In Prong One examiners evaluate whether the claim recites a judicial exception, i.e., whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. Claim 1 recites (i.e., sets forth or describes) an abstract idea of a splitting and sending different types of tokens. Specifically, but for the additional elements, the claim under its broadest reasonable interpretation recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The certain method of organizing human activity grouping is used to describe fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior or relationships or interactions between people. Fundamental economic principles or practices are relating to the economy and commerce, or recite hedging, insurance, and mitigating risks. Commercial or legal interactions recite agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. Managing personal behavior or relationships or interactions between people recite social activities, teaching, and following rules or instructions. See MPEP § 2106.04(a)(2), subsection II. The claim limitations reciting the abstract idea are grouped within the “certain methods of organizing human activity grouping of abstract ideas because the limitations recite fundamental economic principles or practices, as they recite mitigating risk, commercial or legal interactions, as they recite sales activities or behaviors, managing personal behavior or relationships or interactions between people, as they recite following rules or instructions. More specifically, the following underlined claim elements recite the abstract idea while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a).
A method performed in a first secure element of an electronic payment transaction system, comprising the steps of:
splitting, by the first secure element, an electronic token having a monetary value into two or more electronic tokens,
wherein the monetary value of the electronic token is equal to the sum of monetary values of the two or more electronic tokens;
sending, by the first secure element, one of the two or more tokens to a second secure element of the electronic payment transaction system;
wherein generating, by the first secure element, an electronic second-type token based on an electronic first-type token,
wherein the electronic first-type token is managed by the first secure element and is ready-to-be-used in the electronic payment transaction system, and
wherein the monetary value of the generated electronic second-type token is equal to the monetary value of the electronic first-type token; and
wherein, in the step of splitting, the generated electronic second-type token is split into two or more electronic second-type tokens.
Step 2A Prong Two
In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Here, claim 1 as a whole, looking at the identified additional elements individually and in combination, does not integrate the judicial exception into a practical application. First, the non-underlined additional elements merely serve as a tool to perform the abstract idea (MPEP § 2106.05(f)), and generally link the use of the judicial exception to a particular technological environment (MPEP § 2106.05(h)). Additionally, regarding the specification and claims, there is no improvement in the functioning of a computer or an improvement to other technology or technical field present (MPEP §§ 2106.04(d)(1) and 2106.05(a)), there is no applying or using the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition present (MPEP § 2106.04(d)(2)), there is no implementing the judicial exception with or using the judicial exception in conjunction with a particular machine or manufacture that is integral to the claim present (MPEP § 2106.05(b)), there is no effecting a transformation or reduction of a particular article to a different state or thing present (MPEP § 2106.05(c)), and there is no 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 present, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP § 2106.05(e)). Thus, the claim as a whole is directed to a judicial exception and thus requires further analysis at Step 2B to determine if the claim as a whole, amounts to significantly more than the exception itself (See MPEP 2106.04, subsection II).
Step 2B
Step 2B determines whether the claim as a whole amount to significantly more than the exception itself. Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. Here, the additional elements, taken individually and in combination, do not result in claim 1, as a whole, amounting to significantly more than the judicial exception. As discussed previously with respect to Step 2A, the additional elements merely serve as a tool to perform an abstract idea and generally link the use of the judicial exception to a particular technological environment. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Dependent Claims
Claims 2-8 have also been analyzed. However, the subject matter of these claims also fails to recite patent eligible subject matter for the following reasons:
Claim 2 recites the following underlined claim elements as abstract ideas while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a). The non-underlined additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP § 2106.05(f)). The dependent claim recites (i.e., sets forth or describes) an abstract idea of binding monetary value to a private value.
electronic second-type tokens comprise a private value and a monetary value, the generated second-type token and the split electronic second-type tokens include the same shared private value; and/or
electronic first-type tokens comprise a private value and a monetary value, wherein a first-type token includes an unique private value.
Claim 3 recites the following underlined claim elements as abstract ideas while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a). The non-underlined additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP § 2106.05(f)). The dependent claim recites (i.e., sets forth or describes) an abstract idea of registering tokens.
the first secure element provides a registration request for registering the generated electronic second-type token in a token register of the transaction system; and/or
the split electronic second-type tokens share a common registration in the token register of the transaction system; and/or
electronic first-type tokens are individually registered in the token register of the transaction system.
Claim 4 recites the following underlined claim elements as abstract ideas while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a). The non-underlined additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP § 2106.05(f)). The dependent claim recites (i.e., sets forth or describes) an abstract idea of splitting a second-type of token which copies split monetary values.
wherein the split electronic second-type tokens correspond to copies of the generated electronic second-type token each having a respectively split monetary value; and/or
wherein split electronic first-type tokens comprise generated individual data and/or additional data as well as a respectively split monetary value.
Claim 5 recites the following underlined claim elements as abstract ideas while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a). The non-underlined additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP § 2106.05(f)). The dependent claim recites (i.e., sets forth or describes) an abstract idea of second-type tokens use.
wherein electronic second-type tokens are dedicated for use in only one or two specific use cases, for offline transactions and/or smart contracts; and/or
wherein electronic first-type tokens can be used in online and offline electronic payment transactions in the transaction system.
Claim 6 recites the following underlined claim elements as abstract ideas while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a). The non-underlined additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP § 2106.05(f)). The dependent claim recites (i.e., sets forth or describes) an abstract idea of setting issuance and value limits for tokens.
the number of electronic second-type tokens generated by the first secure element per year is below 100; and/or
the number of split electronic second-type tokens sharing a common registration is above 500; and/or
the monetary value of the electronic second-type token send to the second secure element is less than 1/500, of the monetary value of the generated electronic second-type token.
Claim 7 recites the following underlined claim elements as abstract ideas while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a). The non-underlined additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP § 2106.05(f)). The dependent claim recites (i.e., sets forth or describes) an abstract idea of an embedded area code and time for a token.
wherein each generated second-type token comprises an area code data as a further token element, wherein the area code data represents one predefined geographic region of the electronic payment transaction system,
wherein each electronic second-type token further comprises a time data as further token element, wherein an automated transmitting of the electronic second-type token to the service provider unit is initiable based on the time data and/or the area code data.
Claim 8 recites the following underlined claim elements as abstract ideas while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a). The non-underlined additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP § 2106.05(f)). The dependent claim recites (i.e., sets forth or describes) an abstract idea of linking private and public values to tokens.
wherein the electronic second-type token comprises a private value of a token element pair and wherein a token reference stored in a token register comprises a public value of the token element pair, wherein
the private value is a private key of a cryptographic key pair and a public value of a token reference stored in the token register is the corresponding public key of the cryptographic key pair, the cryptographic key pair being generated by the first secure element and/or the token register; or
the private value is identical with the public value and is the result of a Hash-based Message Authentication Code, HMAC, function on the monetary value of the electronic first-type token.
Claims 9-10
Step 1
As per paragraph 7, for the purposes of compact prosecution, the office will interpret “token register” as a “computing device”; the office notes that Applicants specification does not provide support for such an interpretation. As such, Claims 9-10 are directed to a “computing device” (See Applicants Specification, Para. 0018). Therefore, these claims fall within the four statutory categories of invention, and thus must be further analyzed at Step 2A to determine if the claims are directed to a judicial exception (See MPEP 2106.03, subsection II). Therefore, these claims fall within the four statutory categories of invention, and thus must be further analyzed at Step 2A to determine if the claims are directed to a judicial exception (See MPEP 2106.03, subsection II).
Step 2A Prong One
In Prong One examiners evaluate whether the claim recites a judicial exception, i.e., whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. Claim 9 recites (i.e., sets forth or describes) an abstract idea of a generating, splitting, and sending defined-value tokens. Specifically, but for the additional elements, the claim under its broadest reasonable interpretation recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The certain method of organizing human activity grouping is used to describe fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior or relationships or interactions between people. Fundamental economic principles or practices are relating to the economy and commerce, or recite hedging, insurance, and mitigating risks. Commercial or legal interactions recite agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. Managing personal behavior or relationships or interactions between people recite social activities, teaching, and following rules or instructions. See MPEP § 2106.04(a)(2), subsection II. The claim limitations reciting the abstract idea are grouped within the “certain methods of organizing human activity grouping of abstract ideas because the limitations recite fundamental economic principles or practices, as they recite mitigating risk, commercial or legal interactions, as they recite sales activities or behaviors, managing personal behavior or relationships or interactions between people, as they recite following rules or instructions. More specifically, the following underlined claim elements recite the abstract idea while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a).
A secure element for providing electronic second-type tokens, wherein
the secure element comprises an electronic first-type token having a monetary value,
the secure element for providing to a second secure element an electronic second-type token having a defined monetary value is configured to:
generate an electronic second-type token based on the electronic first-type token, wherein the monetary value of the generated electronic second-type token is equal to the monetary value of the electronic first-type token;
split the generated electronic second-type token into two or more electronic second-type tokens, a split electronic second-type token of the split electronic second-type tokens having the defined monetary value; and
send to the second secure element the split electronic second-type token having the defined monetary value.
Step 2A Prong Two
In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Here, claim 9 as a whole, looking at the identified additional elements individually and in combination, does not integrate the judicial exception into a practical application. First, the non-underlined additional elements merely serve as a tool to perform the abstract idea (MPEP § 2106.05(f)), and generally link the use of the judicial exception to a particular technological environment (MPEP § 2106.05(h)). Additionally, regarding the specification and claims, there is no improvement in the functioning of a computer or an improvement to other technology or technical field present (MPEP §§ 2106.04(d)(1) and 2106.05(a)), there is no applying or using the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition present (MPEP § 2106.04(d)(2)), there is no implementing the judicial exception with or using the judicial exception in conjunction with a particular machine or manufacture that is integral to the claim present (MPEP § 2106.05(b)), there is no effecting a transformation or reduction of a particular article to a different state or thing present (MPEP § 2106.05(c)), and there is no 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 present, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP § 2106.05(e)). Thus, the claim as a whole is directed to a judicial exception and thus requires further analysis at Step 2B to determine if the claim as a whole, amounts to significantly more than the exception itself (See MPEP 2106.04, subsection II).
Step 2B
Step 2B determines whether the claim as a whole amount to significantly more than the exception itself. Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. Here, the additional elements, taken individually and in combination, do not result in claim 1, as a whole, amounting to significantly more than the judicial exception. As discussed previously with respect to Step 2A, the additional elements merely serve as a tool to perform an abstract idea and generally link the use of the judicial exception to a particular technological environment. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Dependent Claims
Claim 10 has also been analyzed. However, the subject matter of these claims also fails to recite patent eligible subject matter for the following reasons. Claim 10 recites the following underlined claim elements as abstract ideas while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a). The non-underlined additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP § 2106.05(f)). The dependent claim recites (i.e., sets forth or describes) an abstract idea of merging on a private-value match and adding received monetary value.
wherein the secure element is a provisioning secure element of a service provider unit in the transaction system, and the second secure element is a secure element of a participant of the transaction system; and/or
wherein the secure element in subsequent steps uses a previously split electronic second-type token to provide electronic second-type tokens to further secure elements of the transaction system, by respectively splitting the previously split electronic second-type token and sending the further split electronic second-type token to a further secure element; and/or
the secure element being configured in accordance with the features of a method performed in a first secure element of an electronic payment transaction system, comprising the steps of:
splitting, by the first secure element, an electronic token having a monetary value into two or more electronic tokens,
wherein the monetary value of the electronic token is equal to the sum of monetary values of the two or more electronic tokens;
sending, by the first secure element, one of the two or more tokens to a second secure element of the electronic payment transaction system;
wherein generating, by the first secure element, an electronic second-type token based on an electronic first-type token,
wherein the electronic first-type token is managed by the first secure element and is ready-to-be-used in the electronic payment transaction system, and
wherein the monetary value of the generated electronic second-type token is equal to the monetary value of the electronic first-type token; and
wherein, in the step of splitting, the generated electronic second-type token is split into two or more electronic second-type tokens.
Claims 11-13
Step 1
As per paragraph 7, for the purposes of compact prosecution, the office will interpret “token register” as a “computing device”; the office notes that Applicants specification does not provide support for such an interpretation. As such, Claims 11-13 are directed to a “computing device” (See Applicants Specification, Para. 0018). Therefore, these claims fall within the four statutory categories of invention, and thus must be further analyzed at Step 2A to determine if the claims are directed to a judicial exception (See MPEP 2106.03, subsection II).
Step 2A Prong One
In Prong One examiners evaluate whether the claim recites a judicial exception, i.e., whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. Claim 11 recites (i.e., sets forth or describes) an abstract idea of a splitting and merging identical private value tokens. Specifically, but for the additional elements, the claim under its broadest reasonable interpretation recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The certain method of organizing human activity grouping is used to describe fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior or relationships or interactions between people. Fundamental economic principles or practices are relating to the economy and commerce, or recite hedging, insurance, and mitigating risks. Commercial or legal interactions recite agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. Managing personal behavior or relationships or interactions between people recite social activities, teaching, and following rules or instructions. See MPEP § 2106.04(a)(2), subsection II. The claim limitations reciting the abstract idea are grouped within the “certain methods of organizing human activity grouping of abstract ideas because the limitations recite fundamental economic principles or practices, as they recite mitigating risk, commercial or legal interactions, as they recite sales activities or behaviors, managing personal behavior or relationships or interactions between people, as they recite following rules or instructions. More specifically, the following underlined claim elements recite the abstract idea while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a).
A secure element for exchanging electronic second-type tokens, the secure element being configured for
splitting one second-type token into two or more second-type tokens, wherein the private values in the two or more second-type tokens are identical to the private value of the second-type token, or
merging the one or more second-type token with another second-type token managed by the secure element and having an identical private value into a merged second-type token; and
transmitting, by the secure element, the split or merged second-type token to a second secure element.
Step 2A Prong Two
In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Here, claim 11 as a whole, looking at the identified additional elements individually and in combination, does not integrate the judicial exception into a practical application. First, the non-underlined additional elements merely serve as a tool to perform the abstract idea (MPEP § 2106.05(f)), and generally link the use of the judicial exception to a particular technological environment (MPEP § 2106.05(h)). Additionally, regarding the specification and claims, there is no improvement in the functioning of a computer or an improvement to other technology or technical field present (MPEP §§ 2106.04(d)(1) and 2106.05(a)), there is no applying or using the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition present (MPEP § 2106.04(d)(2)), there is no implementing the judicial exception with or using the judicial exception in conjunction with a particular machine or manufacture that is integral to the claim present (MPEP § 2106.05(b)), there is no effecting a transformation or reduction of a particular article to a different state or thing present (MPEP § 2106.05(c)), and there is no 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 present, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP § 2106.05(e)). Thus, the claim as a whole is directed to a judicial exception and thus requires further analysis at Step 2B to determine if the claim as a whole, amounts to significantly more than the exception itself (See MPEP 2106.04, subsection II).
Step 2B
Step 2B determines whether the claim as a whole amount to significantly more than the exception itself. Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. Here, the additional elements, taken individually and in combination, do not result in claim 11, as a whole, amounting to significantly more than the judicial exception. As discussed previously with respect to Step 2A, the additional elements merely serve as a tool to perform an abstract idea and generally link the use of the judicial exception to a particular technological environment. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Dependent Claims
Claims 12-13 have also been analyzed. However, the subject matter of these claims also fails to recite patent eligible subject matter for the following reasons:
Claim 12 recites the following underlined claim elements as abstract ideas while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a). The non-underlined additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP § 2106.05(f)). The dependent claim recites (i.e., sets forth or describes) an abstract idea of comparing private values, where if identical, merging and adding monetary value.
wherein upon receiving an electronic second-type token in the secure element, the second secure element compares the private value of the electronic second-type token with private value of electronic second type token elements managed by the second secure element, wherein if the private values are identical, in the step of merging the monetary value of the received electronic second-type token is added to the monetary value of the electronic second-type token managed by the second secure element.
Claim 13 recites the following underlined claim elements as abstract ideas while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a). The non-underlined additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP § 2106.05(f)). The dependent claim recites (i.e., sets forth or describes) an abstract idea of negotiating token elements.
wherein a negotiation step between the secure element and the second secure element is performed to identify whether each of the secure element and the second secure element comprise one or more second-type token having at least one identical token element, wherein a token element is one or more of the following items:
a private value;
an area code data;
a time data; and/or
a short-ID data.
Claims 14-15
Step 1
As per paragraph 7, for the purposes of compact prosecution, the office will interpret “token register” as a “computing device”; the office notes that Applicants specification does not provide support for such an interpretation. As such, Claims 14-15 are directed to a “computing device” (See Applicants Specification, Para. 0018). Therefore, these claims fall within the four statutory categories of invention, and thus must be further analyzed at Step 2A to determine if the claims are directed to a judicial exception (See MPEP 2106.03, subsection II). Therefore, these claims fall within the four statutory categories of invention, and thus must be further analyzed at Step 2A to determine if the claims are directed to a judicial exception (See MPEP 2106.03, subsection II).
Step 2A Prong One
In Prong One examiners evaluate whether the claim recites a judicial exception, i.e., whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. Claim 14 recites (i.e., sets forth or describes) an abstract idea of a token registration and recording values. Specifically, but for the additional elements, the claim under its broadest reasonable interpretation recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The certain method of organizing human activity grouping is used to describe fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior or relationships or interactions between people. Fundamental economic principles or practices are relating to the economy and commerce, or recite hedging, insurance, and mitigating risks. Commercial or legal interactions recite agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. Managing personal behavior or relationships or interactions between people recite social activities, teaching, and following rules or instructions. See MPEP § 2106.04(a)(2), subsection II. The claim limitations reciting the abstract idea are grouped within the “certain methods of organizing human activity grouping of abstract ideas because the limitations recite fundamental economic principles or practices, as they recite mitigating risk, commercial or legal interactions, as they recite sales activities or behaviors, managing personal behavior or relationships or interactions between people, as they recite following rules or instructions. More specifically, the following underlined claim elements recite the abstract idea while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a).
A token register for registering tokens of an electronic payment transaction system,
wherein the token register registers electronic first-type tokens and electronic second-type tokens of the electronic payment transaction system;
wherein the token register for a registered token stores a monetary value;
wherein for a registered electronic first-type token the token register only accepts full value requests, the full value request including the monetary value of the registered electronic first-type token; and
wherein for a registered electronic second-type token the token register accepts a partial value request, the partial value request including a requested partial monetary value, and the token register reduces the monetary value of the registered electronic second-type token by the requested partial monetary value.
Step 2A Prong Two
In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Here, claim 14 as a whole, looking at the identified additional elements individually and in combination, does not integrate the judicial exception into a practical application. First, the non-underlined additional elements merely serve as a tool to perform the abstract