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 .
This is the Final Office Action in response to the Amendment filed on December 18, 2025 for Application No. 18/763,464 filed on July 03, 2024, title: “Linking A Transaction Account With A Form Factor”.
Status of the Claims
Claims 1-20 were pending. By the 12/18/2025 Response, claims 1, 3-6, 8, 10-13, 15, and 17-20 have been amended, and no claim has been added or cancelled. Accordingly, claims 1-20 are pending in this Application and have been examined.
Priority
This Application was filed on 07/03/2024 and is a CON of US Application No. 16/249,668 filed on 01/16/2019 (Patented No. 12,056,683) which is a CON of US Application No. 14/625,865 filed 02/19/2015 (Patented No. 10,223,689) which has a US Provisional Application No. 62/090,153 filed 12/10/2014.
For the purpose of examination, the 12/10/2014 is considered to be the effective filing date.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of US Patent No. 12,056,683 and claims 1-20 of US Patent No. 10,223,689. Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims of the present Application recites substantially the same limitations as the claims of the Patents with minor variations that would have been obvious to one of ordinary skills in the art. The Application and the Patents are directed to the same invention of linking a transaction account with a form factor. Also, both the Application and Patents have the same inventors and are commonly owned.
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 the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Under the Step 1 analysis, the claims are reviewed to determine whether they fall within the four statutory categories of patentable subject matter (i.e., process, machine, manufacture, or combination of matter).
Claims 1-7 recite a method comprising a series of steps, claims 8-14 recite a system comprising a mobile device with processor and memory and machine-readable instructions, and claims 15-20 recites a non-transitory computer-readable medium comprising machine-readable instructions and a client device with processor. Therefore, the claims recite a process, machine, and manufacture which fall within the four statutory categories of invention (Step 1-Yes, the claims are statutory).
Step 2A Prong 1:
Under the 2019 Revised PEG, Step 2A, Prong 1, the claims are reviewed to determine whether they recite a judicial exception by identifying if the claim limitations fall in one of the enumerated abstract idea groupings (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability.
Claim 1 recites a method comprising:
retrieving, by an application executed by a mobile device, a secure chip identifier (ID) and an alias code from a wearable device using a Bluetooth connection, the wearable device having a communication antenna and a secure chip, the secured chip ID being retrieved from the secure chip; (pre-solution activity)
identifying, by the application executed by the mobile device, a selection of a transaction account for linking to the wearable device; and (processing data over the network)
transmitting, by the application executed by the mobile device, the secure chip ID, the alias code, and the transaction account to a transaction account issuer for linking the secure chip ID to the transaction account for a contactless payment feature on the wearable device based at least in part on the selection of the transaction account, (mitigating risk before authorizing payment)
wherein the transaction account issuer is configured to link the transaction account to the alias code for the secure chip ID, the wearable device being configured to provide the alias code to a point of sale system for executing a contactless transaction using the transaction account linked to the alias code.
The above limitations (underlined), as drafted, is a process that, under its broadest reasonable interpretation, covers a method of organizing human activity but for the recitation of generic computer components (e.g., a system comprising a mobile device, secure chip ID, wearable device, communication antenna, and Bluetooth connection). More specifically, the claim recites a process of using a mobile device along with an application for linking a transaction account with a wearable device (a form factor) by retrieving a secure chip ID and an alias code from a wearable device using a Bluetooth connection, identifying a selection of a transaction account for linking to the wearable device, and transmitting the secure chip ID, the alias code, and the transaction account to a transaction account issuer for linking the secure chip ID to the transaction account for a contactless payment feature on the wearable device in order to authorize the wearable device to make payment transaction.
The claim is drawn to a method of linking a transaction account via a secure chip ID and an alias code to a wearable device in order to authorize the wearable device to make contactless transactions. The claim is directed to a process of mitigating risk before authorizing payment, which is a fundamental economic practice (i.e., hedging, insurance, mitigating risk) and commercial interaction (i.e., agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). The additional elements, such as the mobile device, the wearable device with the secure chip and the alias code, and the communication antenna, all are recited at a high level of generality and merely invoked to perform the generic steps including retrieving, identifying, and transmitting. The mere nominal recitation of the generic computer components do not take the claim out of the methods of organizing human activity grouping. See MPEP 2106.04(a)(2)III.C.2.
If a claim limitation, under its broadest reasonable interpretation, covers performance of a fundamental economic practice or commercial interaction, then it falls within the “Certain Methods of Organizing Human Activity” groupings of abstract ideas. Accordingly, the claim recites an abstract idea.
Claim 8 recites a system comprising a mobile device comprising processor, memory, and machine-readable instructions. Claim 15 recites a non-transitory computer-readable medium comprising machine-readable instructions. These claims recite the comparable elements and limitations as discussed in claim 1. Therefore, these claims also recite an abstract idea (Step 2A, Prong 1-Yes, the claims recite an abstract idea).
Step 2A Prong 2:
Under the 2019 Revised PEG, Step 2A, Prong 2, the claims are reviewed to determine whether the judicial exception (i.e., abstract idea) is integrated into a practical application. In order to make this determination, the additional element(s), or combination of elements, are analyzed to determine if the claim as a whole integrates the recited judicial 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.
Claim 1 recites a method comprising:
retrieving, by an application executed by a mobile device, …;
identifying, by the application executed by the mobile device, …; and
transmitting, by the application executed by the mobile device, … wherein the transaction account issuer is configured to link the transaction account to the alias code for the secure chip ID, the wearable device being configured to provide the alias code to a point of sale system for executing a contactless transaction using the transaction account linked to the alias code.
The claims (1, 8, and 15) recite the additional elements of a computer based system comprising a mobile device, a secure chip with ID, an alias code, a communication antenna, a tangible form factor (a wearable device), and a Bluetooth connection, all are recited at a high level of generality and merely invoked to perform the generic steps. All the additional computer elements are the general computer elements as described in Applicant’s Specification (see US Publication. No. 2024/0362616-A1). Paragraphs 58 of the Publication describes a data set may contain any type of information; paragraph 61 describes a network includes any cloud; paragraph 67 describes any databases, systems, devices, servers or other components; paragraph 68 describes encryption may be performed by way of any of techniques; paragraphs 70 and 72 describe web client includes any device, as well as various conventional support software and drivers typically associated with computers; paragraphs 74-75 describe any of the communications, inputs, storage, databases or displays; paragraph 86 describes any suitable identifier; and paragraph 91-93 describe any account, any device and code, any form of plastic, electronic, magnetic, radio frequency, wireless, audio and/or optical device, any entity, any bank. Applicant’s Specification does not describe how these computer elements are different from the general computer components and are merely invoked as tools to perform the generic steps. Also, Applicant’s Specification (see paragraphs 5-8) does not describe what or how the “alias code” is different from a general alias code. Therefore, the additional computer elements including the alias code are treated as generic computer components.
The newly added amendments such as “wherein the transaction account issuer is configured to link the transaction account to the alias code for the secure chip ID, the wearable device being configured to provide the alias code to a point of sale system for executing a contactless transaction using the transaction account linked to the alias code” are additional details for the existing functional steps of the claim which further narrow the scope of the claim, but do not make the 101 analysis. As explained in the December 16, 2014 interim Eligibility Guidance from the USPTO (in reference to the buySAFE, Inc. v. Google, Inc. decision), further narrowing the details of an abstract idea does not change the 101 analysis since a narrower abstract idea does not make it any less abstract.
The judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of a system comprising a mobile device and processor and memory. The system is recited at a high-level of generality (i.e., as a generic processor performing generic computer functions of receiving/transmitting communications, processing information, querying the database) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea (Step 2A, Prong 2-No, the claims are not integrated into a practical application).
Step 2B:
Under the 2019 Revised PEG, Step 2A, Prong 2, the claims are reviewed to determine whether the claims provide an inventive concept (i.e., whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
The independent claims (1, 8, and 15) do not include additional elements, considered both individually and as an ordered combination, that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using a computer to perform the retrieving, identifying, and transmitting functions as claimed amounts to no more than mere instructions to apply the exception using a generic computer component. All these generic computer functions are well-understood, routine, and conventional activities previously known to the industry similar to those referenced by MPEP 2106.05(d)II. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Therefore, the independent claims are not patent eligible.
Dependent claims 2-7, 9-14, and 16-20 depend on claims 1, 8, and 15 respectively, and therefore include all the limitations of claims 1, 8, and 15. Thus, the dependent claims recite the same abstract idea of a method of linking a transaction account to a form factor.
Claims 2, 9, and 16 recite additional limitations “wherein the wearable device has a form factor of a watch or an activity tracker.” (Additional details for the wearable device). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 3, 10, and 17 recite additional limitations “wherein retrieving the secure chip ID from the wearable device is performed via a companion application executed on the mobile device, the companion application being associated with the wearable device the, the companion application transmitting the secure chip ID to the application.” (Additional detailed instructions for retrieving the secure chip ID from the wearable device via a companion application, the companion application transmitting the secure chip ID to the application). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 4, 11, and 18 recite additional limitations “wherein the transmission of the secure chip ID to the application is a passive process occurs without user input.” (Additional details for the process of the transmission of the secure chip ID). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 5 and 19 recite additional limitations “wherein the selection of a transaction account is a first selection that occurred at a first time and a first transaction account and further comprising: identifying, by the application executed by the mobile device, a second selection of a second transaction account at a second time; and reassigning, by the application executed by the mobile device, the second transaction account to the alias code based at least in part on the second selection at the second time.” (Additional details for the selections of a first selection, a second selection, and reassigning the second transaction account to the alias code). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 6, 13, and 20 recite additional limitations “wherein the alias code is configured to be used for approving or denying the contactless transaction.” (Additional details for the function of the alias code). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 7 and 14 recite additional limitations “wherein transmitting the secure chip ID and the transaction account to the transaction account issuer is a passive process that omits active input from a user of the mobile device.” (Additional details for the transmitting function of the secure chip ID and the transaction account). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 12 recites additional limitations “wherein the alias code is stored on a device memory of the wearable device or the secured chip of the wearable device.” (Additional details for storing the alias code). This claim individually or in combination with others does not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
The dependent claims do no more than providing additional instructions and administrative requirements for the functional steps already recited in the independent claims. Every recited combination between the recited computing hardware and the recited computing functions has been considered. No non-generic or non-conventional arrangement is found. The dependent claims further describe the business relations of the certain method of organizing human activity (abstract idea) and do not include additional elements other than those of claims 1, 8, and 15 to provide a practical application or significantly more than the judicial exception. Therefore, the dependent claims also are not patent eligible.
The focus of the claims is on a method for linking a transaction account via a secure chip ID and an alias code to a wearable device in order to authorize the wearable device to make contactless payment transactions. The claims are not directed to a new type of processor, a secure chip, a mobile device, a computer network, a form factor, or a system memory, nor do they provide a method for processing data that improves existing technological processes. The focus of the claims is not on improving computer-related technology, but on an independent abstract idea that uses computers as tools. Accordingly, when viewed as a whole, the claims do no more than generally linking the use of the judicial exception to a particular technological environment or field of use. No inventive concept is found in the claims. Therefore, the claims do not add significantly more (i.e., an inventive concept) to the abstract idea (Step 2B-No, the claims are not significantly more than the abstract idea).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3, 5-6, 8, 10, 12-13, 15, 17, and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brown (US Pub. No. 2015/0348009) (hereinafter “Brown”) and further in view of Kelly (US Pub. No. 2012/0191611) (hereinafter “Kelly”).
As per Claim 1, Brown teaches a method comprising,
Brown in view of Kelly teaches the following limitations;
retrieving, by an application executed by a mobile device, a secure chip identifier UD) and an alias code from a wearable device using Bluetooth connection, the wearable device having a communication antenna and a secure chip, the secured chip ID being retrieved from the secure chip
(see Kelly, para. 92 “includes providing a proxy or “alias” code (“alias account code”) to a merchant system during a transaction”.
see Brown, para. 30 “In some instances, communication between user devices 205 can facilitate transactions (e.g., generally or specific transactions). For example, one user device (e.g., phone 205b) can serve as a provisioning or managing device, and can send notifications of new or updated payment account data (e.g., information for a new account, updated information for an existing account, and/or an alert pertaining to an existing account). As another example, a first user device can send data to a second user device reflecting information about payment transactions facilitated at the first user device. The information can include, e.g., a payment amount, an account used, a time of purchase and/or whether a default account was changed. Such information can be used at the second device to, for example, update a default account (e.g., based on a learning algorithm or explicit user input)
para. 31 “User devices 205 can communicate with each over any of a variety of networks. For example, the devices can communicate using a Bluetooth connection 210 (e.g., which can include a traditional Bluetooth connection or a Bluetooth Low Energy connection) or using a WIFI network 215. Communications between user devices can be conditioned to reduce the possibility of inappropriately sharing information across devices. For example, communications relating to payment information can require that the communicating devices be paired (e.g., being associated with each via an explicit user interaction) or be associated with a same user account)
and para. 70 “Communications component 106 may be provided to allow device 100 to communicate with one or more other electronic devices or servers or subsystems (e.g., one or more subsystems or other components of system 1) using any suitable communications protocol. For example, communications component 106 may support …, Bluetooth.TM., Bluetooth.TM. Low Energy ("BLE"), ... Communications component 106 may be configured to determine a geographical position of electronic device 100. For example, communications component 106 may utilize the global positioning system ("GPS") or a regional or site-wide positioning system that may use cell tower positioning technology or Wi-Fi technology”);
Brown teaches the following limitations;
identifying, by the application executed by the mobile device, a selection of a transaction account for linking to the wearable device
(see Brown, para. 25, 29, 30, 31, and Figure 2/elements 205a (wearable device), 205b (mobile phone), 210 (Bluetooth connection), 215 (WIFI network), 230 (Payment server).
para. 25 “User device 110 can identify a payment account to use for a transaction. In some instances, a default account is identified. In some instances, user 105 can provide input to device 110 to select between accounts.
para. 29 “A user can use a user device 205 to add a payment account, such that information for the account will be securely stored on the device. In one instance, after a user initiates such process, information for the account is transmitted to a transaction-coordination server, which then communicates with a server operated by a payment network for the account (e.g., a payment server) to ensure a validity of the entered information. The server can also provide a script that allows payment information for the account to be programmed onto the secure element.
para. 30 “In some instances, communication between user devices 205 can facilitate transactions (e.g., generally or specific transactions). For example, one user device (e.g., phone 205b) can serve as a provisioning or managing device, and can send notifications of new or updated payment account data (e.g., information for a new account, updated information for an existing account, and/or an alert pertaining to an existing account). As another example, a first user device can send data to a second user device reflecting information about payment transactions facilitated at the first user device. The information can include, e.g., a payment amount, an account used, a time of purchase and/or whether a default account was changed. Such information can be used at the second device to, for example, update a default account (e.g., based on a learning algorithm or explicit user input).
para. 31 “User devices 205 can communicate with each over any of a variety of networks. For example, the devices can communicate using a Bluetooth connection 210 (e.g., which can include a traditional Bluetooth connection or a Bluetooth Low Energy connection) or using a WIFI network 215. Communications between user devices can be conditioned to reduce the possibility of inappropriately sharing information across devices. For example, communications relating to payment information can require that the communicating devices be paired (e.g., being associated with each via an explicit user interaction) or be associated with a same user account.); and
Brown in view of Kelly teaches the following limitations;
transmitting, oy the application executed by the mobile device, the secure chip ID, the alias code, and the transaction account to a transaction account issuer for linking the secure chip ID to the transaction account for a contactless payment feature on the wearable device based at least in part on the selection of the transaction account, wherein the transaction account issuer is configured to link the transaction account to the alias code for the secure chip ID, the wearable device being configured to provide the alias code to a point of sale system for executing a contactless transaction using the transaction account linked to the alias code
(see Kelly, para. 92 “includes providing a proxy or “alias” code (“alias account code”) to a merchant system during a transaction”.
see Brown, para. 29 “… The server can also provide a script that allows payment information for the account to be programmed onto the secure element.”), 35 “… In some instances, payment server 230 includes a server of an issuing bank.”,
para. 31 “… For example, communications relating to payment information can require that the communicating devices be paired (e.g., being associated with each via an explicit user interaction) or be associated with a same user account.”, 39 “… a secure element in user device 205 can release payment information to allow an app on the device to access the information (e.g., and to transmit it to a server associated with the app).).
Brown teaches every limitations except the limitation “alias code”. However, Kelly teaches such limitation. It would have been obvious to one of ordinary skill in the art at the time of the invention was filed to incorporate the “alias code” features, as taught by Kelly, in the method of Brown in order to facilitate a better way for making contactless payment. Since Brown and Kelly are directed to transaction management, one of ordinary skill in the art would have been motivated to combine the prior arts to achieve the claimed invention and that there would have been a reasonable expectation of success.
As per Claim 3, Brown in view of Kelly teaches the method of claim 1. Brown further teaches wherein retrieving the secure chip ID from the wearable device is performed via a companion application executed on the mobile device the companion application executed on the mobile device, the companion application being associated with the wearable device, the companion application transmitting the secure chip ID to the application
(see Brown, para. 31 “… For example, communications relating to payment information can require that the communicating devices be paired (e.g., being associated with each via an explicit user interaction) or be associated with a same user account.”, 39 “… a secure element in user device 205 can release payment information to allow an app on the device to access the information (e.g., and to transmit it to a server associated with the app).).
As per Claim 5, Brown in view of Kelly teaches the method of claim 1. Brown further teaches wherein the selection of a transaction account is a first selection that occurred at a first time and a first transaction account and further comprising:
identifying, by the application executed by the mobile device, a second selection of a second transaction account at a second time
(see Brown, para. 25 “User device 110 can identify a payment account to use for a transaction. In some instances, a default account is identified. In some instances, user 105 can provide input to device 110 to select between accounts.”); and
reassigning, by the application executed by the mobile device, the second transaction account to the alias code based at least in part on the second selection at the second time
(see Brown, para. 25 “User device 110 can identify a payment account to use for a transaction. In some instances, a default account is identified. In some instances, user 105 can provide input to device 110 to select between accounts.”)
As per Claim 6, Brown in view of Kelly teaches the method of claim 1. Kelly further teaches wherein the alias code is configured to be used for approving or denying the contactless transaction (see Kelly, para. 92 “includes providing a proxy or “alias” code (“alias account code”) to a merchant system during a transaction”.).
One of ordinary skill in the art would have been motivated to incorporate this feature as taught by Kelly in the method of Brown to provide the configuration of the alias code in order to achieve the claimed invention.
As per Claim 8, this claims written in system form corresponds to claim 1 and has the same elements and limitations. Hence, it is rejected under the rationale provided in claim 1.
As per Claim 10, this claims written in system form corresponds to claim 3 and has the same elements and limitations. Hence, it is rejected under the rationale provided in claim 3.
As per Claim 12, this claims written in system form corresponds to claim 5 and has the same elements and limitations. Hence, it is rejected under the rationale provided in claim 5.
As per Claim 13, this claims written in system form corresponds to claim 6 and has the same elements and limitations. Hence, it is rejected under the rationale provided in claim 6.
As per Claim 15, this claims written in computer program form corresponds to claim 1 and has the same elements and limitations. Hence, it is rejected under the rationale provided in claim 1.
As per Claim 17, this claims written in computer program form corresponds to claim 3 and has the same elements and limitations. Hence, it is rejected under the rationale provided in claim 3.
As per Claim 19, this claims written in computer program form corresponds to claim 5 and has the same elements and limitations. Hence, it is rejected under the rationale provided in claim 5.
As per Claim 20, this claims written in computer program form corresponds to claim 6 and has the same elements and limitations. Hence, it is rejected under the rationale provided in claim 6.
Claims 2, 4, 7, 9, 11, 14, 16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Brown, in view of Kelly, and further in view of Khan (US Pub. No. 2015/0161587 A1, filing date 09/02/2014) (hereinafter “Khan”).
As per Claim 2, Brown in view of Kelly teaches the method of claim 1. Brown in view of Kelly does not teach the following limitations, but Khan teaches wherein the wearable device has a form factor of a watch or an activity tracker (see Khan, para. 22 “secure element”, 67 “”other wearable electronics, accessories for sporting equipment, accessory for fitness equipment”).
One of ordinary skill in the art would have been motivated to incorporate this feature as taught by Khan in the method of Brown to provide the details for the wearable device in order to achieve the claimed invention.
As per Claim 4, Brown in view of Kelly teaches the method of claim 1. Brown in view of Kelly does not teach the following limitations, but Khan teaches wherein the transmission of the secure chip ID to the application is a passive process occurs without user input (see Khan, para. 23, “NFC device module 130 may be passive or active.”).
One of ordinary skill in the art would have been motivated to incorporate this feature as taught by Khan in the method of Brown to provide the details for the passive process in order to achieve the claimed invention.
As per Claim 7, Brown in view of Kelly teaches the method of claim 1. Brown in view of Kelly does not teach the following limitations, but Khan teaches wherein transmitting the secure chip ID and the transaction account to the transaction account issuer is a passive process that omits active input from a user of the mobile device (see Khan, para. 23 “NFC device module may be passive or active”, para. 83 “NFC controller module 140 also may be configured to switch NFC component 120 between active and passive modes”).
One of ordinary skill in the art would have been motivated to incorporate this feature as taught by Khan in the method of Brown to provide the passive and active modes in order to achieve the claimed invention.
As per Claim 9, this claims written in system form corresponds to claim 2 and has the same elements and limitations. Hence, it is rejected under the rationale provided in claim 2.
As per Claim 11, this claims written in system form corresponds to claim 4 and has the same elements and limitations. Hence, it is rejected under the rationale provided in claim 4.
As per Claim 14, this claims written in system form corresponds to claim 7 and has the same elements and limitations. Hence, it is rejected under the rationale provided in claim 7.
As per Claim 16, this claims written in computer program form corresponds to claim 2 and has the same elements and limitations. Hence, it is rejected under the rationale provided in claim 2.
As per Claim 18, this claims written in computer program form corresponds to claim 4 and has the same elements and limitations. Hence, it is rejected under the rationale provided in claim 4.
Response to Arguments
Claim Objections
In view of Applicant’s 12/18/2025 comments, the objection is withdraw.
Double Patenting
In view of Applicant’s 12/18/2025 comments, double patenting the rejection is withheld in abeyance until the claims are in condition for allowance.
Claim Rejections - 35 USC § 101
Applicant's arguments filed 12/18/2025 have been fully considered but they are not persuasive.
STEP 2A: Claims 1-20 Are Not Directed to a Judicial Exception
PRONG ONE: Claims 1-20 Do Not Recite an Abstract idea
Per pages 12-13 of the Remarks, Applicant argues that the independent claims are not directed to a fundamental economic practice nor certain methods of organizing human activity because they do not fall into the enumerated categories.
Response:
The Examiner respectfully disagrees. As explained in Step 2A, Prong 1 analysis above, the claims are drawn to a method of linking a transaction account with a secure chip ID and an alias code to a wearable device in order to authorize the wearable device to make contactless transactions. The claims are directed to a process of mitigating risk before authorizing payment, which is a fundamental economic practice and commercial interaction. If a claim limitation, under its broadest reasonable interpretation, covers performance of a fundamental economic practice and/or commercial interaction, then it falls within the “Certain Methods of Organizing Human Activity” groupings of abstract ideas. Therefore, Applicant’s arguments are not persuasive and the claims recite an abstract idea.
PRONG TWO: Claims 1-20 Recite Additional Elements that Integrate the Alleged Judicial Exception into a Practical Application
Per pages 13-16 of the Remarks, Applicant argues the additional elements of the amended claims recite a specific improvement over prior art systems by enabling a wearable computing device to be dynamically linked to a transaction account. The user can use a client device to dynamically select which transaction account for the linkage to the wearable computing device. Applicant argues that the amended claims recite a technical solution to a technical problem. Therefore, the amended independent claims as a whole integrates the abstract idea into a practical application.
Response:
The Examiner respectfully disagrees. As explained in the Step 2A, Prong 2 analysis above, the amended claims do not include additional elements that integrate the abstract idea into a practical application.
The additional elements, such as the mobile device, the wearable device with the secure chip and the alias code, and the communication antenna, all are recited at a high level of generality and merely invoked to perform the generic steps including retrieving, identifying, and transmitting. The mere nominal recitation of the generic computer components do not take the claim out of the methods of organizing human activity grouping. Moreover, although the newly added amendments such as “wherein the transaction account issuer is configured to link the transaction account to the alias code for the secure chip ID, the wearable device being configured to provide the alias code to a point of sale system for executing a contactless transaction using the transaction account linked to the alias code” further narrowing the scope of the abstract idea, they do not change the 101 analysis since a narrower abstract idea does not make it any less abstract. The system is recited at a high-level of generality (i.e., as a generic processor performing generic computer functions of receiving/transmitting communications, processing information, querying the database) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Thus, The additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, Applicant’s arguments are not persuasive. Applicant’s claimed invention is basically “a business solution” to “a business problem” for increasing portability and distribution of control of a transaction instrument, and this is supported in Applicant’s Publication in paragraph 4:
[0004] These transaction cards, while useful for completing financial transactions and highly portable, are often undesirable due to the requirement for a carrier, generally a wallet or purse. Therefore, a need exists for a system and method to address the above recited needs and for increasing portability and distribution of control of a transaction instrument.
STEP 2B: Claims 1-20 Are Not Directed to a Judicial Exception
Applicant argues that the claims contain an inventive concept of a non-conventional and non-generic arrangement of elements and must be “considered in combination because the inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art.” Applicant argues that the claims provide an improvement to wearable computing device with a contactless payment mechanism. The claims provide improvements to the functioning of a computer extracting data. Therefore, the amended claims are patent eligible.
Response:
The Examiner respectfully disagrees. As explained in the Step 2B analysis above, the focus of the claims is on a method for linking a transaction account via a secure chip ID and an alias code to a wearable device in order to authorize the wearable device to make contactless payment transactions. The focus of the claims is not on improving computer-related technology, but on an independent abstract idea that uses computers as tools. The claimed invention is “a business solution” to “a business problem” for increasing portability and distribution of control of a transaction instrument, and this is supported in Applicant’s Specification. Thus, when viewed as a whole, the claims do no more than generally linking the use of the judicial exception to a particular technological environment or field of use. No inventive concept is found in the claims. The claims are not significantly more than the abstract idea. Therefore, Applicant’s arguments are not persuasive, the claims are not patent eligible, and the rejection of the claims under 35 USC § 101 is MAINTAINED.
Claim Rejections - 35 USC § 103
Applicant’s arguments with respect to the rejections of claims 1-20 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of Kelly (US Pub. No. 2012/0191611).
Conclusion
Claims 1-20 are rejected.
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.
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HAI TRAN
Primary Examiner
Art Unit 3695
/HAI TRAN/Primary Examiner, Art Unit 3695