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 Status
Claims 1-20 are currently pending and are presented for examination on the merits.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. § 101, because they recite non-patentable subject matter under MPEP § 2106, e.g., the 2019 PEG, October update. More particularly, the claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, when considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Broad categories of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulas. See, generally, MPEP § 2106; Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
Under MPEP § 2106, Step 1, the claimed invention, taking the broadest reasonable interpretation, recites a process (i.e., a method), machine (e.g., a payment card, a system, etc.), article of manufacture (e.g., a non-transitory computer readable medium) or composition of matter, and as such, is patent eligible.
Under MPEP § 2106, Step 2a-prong 1, Claims 1-20 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). More particularly, the entirety of the method steps is directed towards conducting an offline payment card transaction, and conducting a transaction using tokenized payment card information and storing information in a digital wallet. These are long-standing commercial practices previously performed by humans (e.g., consumers, merchants, payment platforms, etc.) manually and via generic computing. For example, merchants have long taken down a consumer’s credit card number (via pen and paper) for later execution when online; Similarly, a traditional check has long been used to record the parties, payer account, and transaction details offline, for later presentment and use. Each of these aspects of conducting a transaction represents fundamental economic activity. As such, the inventions include an abstract idea under § 2106, and Alice Corporation.
Under step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., the structure—a system, server, user device, digital wallet, account specific key, a microchip, a memory, at least one processor, etc.; and steps such as using a token PAN, etc.) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)) and/or generally instruct an artisan to apply it (the method) across generic computing technology. A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. See Alice, 573 U.S. at 222; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). That is to say, the claims are not directed to a new software or computer, but rather employs pre-existing software to do what’s been previously done, albeit less efficiently or slower. “[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citations omitted). More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (§ 2106.05(e)).
Under part 2b, the additional elements offered by the dependent claims either further delineate the abstract idea (Claims 3, 6, 14, 19, 20 ), add further abstract idea(s) (Claims 2, 4, 5, 7, 10-14, 16, 18), adds insignificant extra-solution activity (Claims 15), or further instruct the artisan to apply it (the abstract idea(s)) across generic computing technology (Claims 4, 5, 8, 19, 20). The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because no one claim effects an improvement to another technology or technical field, an improvement to the functioning of a computer itself, or move beyond a general link of the use of the abstract idea to a particular technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Under Alice, merely applying or executing the abstract idea on one or more generic computer system (e.g., a computer system comprising a generic database; a generic element (NIC) for providing website access, etc.; a generic element for receiving user input; and a generic display on the computer, in any of their forms) to carry out the abstract idea more efficiently fails to cure patent ineligibility. See, e.g., Content Extraction, 776 F.3d at 1347 (claims reciting a “scanner” are nevertheless directed to an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea).
Courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data, MPEP 2106.05(d), wherein the italicized tasks are particularly germane to the instant invention.
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 (i.e., changing from AIA to pre-AIA ) 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5, 7-10, 13, and 17-20 are rejected under 35 U.S.C. § 103 as being unpatentable over US 2019/0370802 to Bennett et al., in view of US 2024/0127223 to Francis et al.
With respect to Claims 1, 9, and 17, Bennett teaches a system comprising a memory and at least one processor (FIG. 6), payment card comprising a microchip ([0002]) configured to, and method for tokenizing a payment card into a digital wallet of a user device (FIGS. 4a-5) comprising: initiating, using one or more processors of the user device and in an offline environment ([0049-52]) without connecting to a server, a tokenization transaction with the payment card (FIGS. 4a-5;[0018]); acquiring, from the payment card and using the one or more processors, and in the offline environment, a token primary account number (PAN; token2PAN) ([0018];[0022]), an account specific key ([0014];[0022]), and tokenization data associated with the tokenization transaction initiated by the user device ([0018], token2PAN translation is derived from the first user PAN; [0025], “The public key is held in cross reference to the PAN and is only known by the issuer of the associated card (credit card, debit card, etc.). So, the first token management system 131 (for example) . . . helps the issuer by masking the PAN with a token, via a token vault provided”); and storing, in a digital wallet of the user device, an association between the token PAN and a digitized version of the payment card ([0003];[0023]; [0025]).
Bennett fails to expressly teach, Francis teaches wherein the token PAN is generated by the payment card; and initiating, using the digital wallet, a transaction with a merchant system. ([0021];[0068];[0078]). Francis further teaches tokenizing a payment card into a digital wallet of the user device ([0021]), and sending the request to do so from the user device to the microchip ([0057];[0083]). Francis discusses disadvantages in merchant transactions, including burdensome task for the consumer, extended checkout times, and security concerns. [0003] It would have been obvious to one of ordinary skill in the art to modify Bennett to include generating the token PAN from the payment card in order to address the concerns discussed in Francis.
With respect to Claims 2, 10, and 18, Bennett teaches prior to acquiring the token PAN, the account specific key, and the tokenization data, mutually authenticating the user device and the payment card with one another ([0022];[0045];[0049-51], authentication).
With respect to Claims 3, and 19, Bennett teaches wherein initiating the tokenization transaction comprises: establishing a communication channel between the user device and the payment card. ([0004];[0018])
With respect to Claims 4, and 20, Bennett teaches wherein the communication channel is established via near field communication. ([0004])
With respect to Claim 5, Bennett teaches establishing an additional communication channel with the digital wallet ([0018];[0045];[0064]).
With respect to Claims 7, and 13, Bennett teaches wherein a plurality of token PANS are stored on a microchip (circuitry) of the payment card; and wherein the token PAN is selected from the plurality of token PANs. ([0047])
With respect to Claim 8, Bennett teaches wherein the account specific key is generated by a microchip of the payment card. ([0012])
Claims 6, 14, and 15 are rejected under § 103 as being unpatentable over Bennett, in view of US 2022/0270086 to Raj et al.
With respect to Claims 6, and 14, Bennett fails to expressly teach, but Raj teaches wherein the tokenization data further comprises a PAN sequence number; wherein the PAN sequence number is generated by the payment card ([0065];[0139]); and wherein the PAN sequence number is a unique identifier associated with each request for a tokenization transaction ([0053];[0056];[0078]). Raj teaches that different channels support different types of tokens, etc. ([0004]) As such, it would have been obvious to one of ordinary skill in the art to modify Bennett to include the use of PAN sequent numbers, since different channels support different types of tokens.
With respect to Claim 15, Bennet fails, but Raj teaches wherein the microchip is further configured to: generate the account specific key based on the token PAN and the PAN sequence number ([0053];[0072];[0137];[0146]). Under the same rationale as Claim 6, it would have been obvious to one of ordinary skill in the art to modify Bennett to include this limitation taught by Raj.
Claims 11, 12, and 16 are rejected under § 103 as being unpatenable over Bennett, in view of Francis, and further in view of US 2021/0256495 to Chen et al.
With respect to Claim 11, Bennett fails to expressly teach, but Chen teaches wherein to authenticate the user device the microchip is further configured to: perform a validation process using a common key with the user device, wherein the common key is provided by an issuer system of the payment card to the user device. ([0070]) Chen discusses the security risks involved with conventional processes. [0004]. As such, it would have been obvious to one of ordinary skill in the art to modify Bennett to include validation using a common key as taught by Chen, in order to reduce security risks.
With respect to Claim 12, Bennett fails, but Chen teaches wherein the microchip is further configured to: update a value of a tokenization counter in response to generating the tokenization data. ([0019]). Under the same rationale as Claim 11, it would have been obvious to one of ordinary skill in the art to modify Bennett to include this limitation taught by Chen.
With respect to Claim 16, Chen teaches wherein the tokenization data further comprises an application transaction counter ([0019]). Bennett teaches an offline data authentication key (see claim 1 above).
Response to remarks
Applicant’s remarks submitted on 12/17/2025 have been fully considered, but are not persuasive where objections/rejections are maintained.
As per § 101, “An abstract idea can generally be described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016), that does not “impact the patentability analysis.” Id. at 1241. The Claims continue to recite inventions directed towards a fundamental economic principle, and long standing commercial practice. More particularly, the inventions are directed towards performing a tokenized payment transaction, and using a token PAN derived from a payment card. It has long been a practice to tokenize payment cards in digital wallets for use in transactions (see, prior art references of record, including Francis). The claims fail to offer an internet or computer centric solution, such that cases like Enfish, Bascom, and McRO are inapplicable; instead, the claims offer a business method being implemented across generic computing technology (e.g., mobile devices, processors, short-range communication, geofencing, etc.). As per the prior art rejection, Francis has been added to teach the limitations added by the instant amendment and reinforce Bennett throughout the claim language. Please note that the applied reference(s) need not use the same terminology, or disclose the limitation verbatim, and also that the entirety of a prior art reference is to be applied to the respective claim(s), such that the pinpoint citations above are exemplary and provided for Applicant’s benefit; other locations within the applied reference(s) may further support the rejection. MPEP 2141.02(VI).
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 WILLIAM J JACOB whose telephone number is (571)270-3082. The examiner can normally be reached on M-F 8:00-5:00, alternating Fri. off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart can be reached on 5712723955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM J JACOB/Examiner, Art Unit 3696
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