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 .
Status of Claims
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/26/2026 has been entered.
This application claims earliest priority from filings received 07/03/2024.
Claims 25-30 newly added, claims 8, 12, 14-16, 18-19 and 21-23 cancelled and claims 1, 10-11, 17, 20 and 24 have been amended.
Claims 1, 10 and 17 are independent claims and 2-7, 9, 11, 13, 20 & 24-30 are dependent.
Applicant’s arguments, see pages 19-20, filed 06/26/2026, with respect to the rejection of claims 1-4, 8-11, 17-18, and 20-24 under 35 USC 103 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 Therefore, the rejection has been withdrawn.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 Vipul Saini et al. (WO 2024/218652 A1, herein Saini).
Claims 1-7, 9-11, 13, 17, 20 and 24-30 are currently pending and have been examined.
Response to Arguments
Applicant's arguments filed 06/26/2026 have been fully considered but they are not persuasive.
Under Step 2A, Prong One, Applicant argues that the pending claims do not recite a judicial exception because the claims do not recite a fundamental economic practice, commercial or legal interaction, or mental process. Applicant further argues that the Office Action oversimplifies the claims and fails to account for limitations directed to the mobile device, smart card, card network, EMV formatted information, and the particular authentication flag.
The Examiner respectfully disagrees. As set forth in the rejection below, representative claim 1 recites a process for authenticating the identity of a user in connection with an authentication related action. In particular, the claim recites receiving information associated with the user, determining that the information indicates a request for authentication, comparing the received information to stored information associated with the user to authenticate the identity of the user, and, upon successful authentication, providing an indication that the user has been authenticated. These limitations recite authenticating or verifying the identity of a user. The recited authentication is performed through a card network using information obtained from a smart card in the EMV payment processing environment and determines whether the user’s identity is authenticated for the recited authentication related action. Accordingly, the identified limitations concern authentication of a participant through payment processing infrastructure in connection with a commercial interaction and fall within the commercial interactions subgroup of Certain Methods of Organizing Human Activity.
Applicant’s reliance on the technological nature of the mobile device, smart card, card network, EMV format, and authentication flag does not establish that the claim fails to recite the identified abstract idea. Those limitations are not disregarded. Rather, as explained in the rejection, they are considered as additional elements under Step 2A, Prong Two to determine whether the identified judicial exception is integrated into a practical application.
Applicant additionally argues that the claims cannot practically be performed in the human mind. This argument does not alter the rejection because the present rejection does not rely upon the mental processes grouping. The claims are analyzed as reciting a certain method of organizing human activity.
Under Step 2A, Prong Two, Applicant argues that the claims integrate any alleged judicial exception into a practical application because the claims utilize existing payment processing infrastructure and EMV transaction technology to provide authentication functionality using a smart card. Applicant further relies upon Specification ¶¶ [3 & 24-25] and argues that the disclosed technology allows authentication using conventionally provided EMV data without requiring additional applets or specialized hardware on the smart card and provides an improvement over conventional two factor authentication.
These arguments have been considered but are not persuasive. The relevant inquiry considers the claim as a whole, including the additional elements individually and in combination. The rejection below does so. In particular, the amended limitations requiring tan authentication flag comprising a first field populated with a predetermined prefix, predetermined suffix, or predetermined unique name, or alternatively a value in a second field comprising an otherwise unused portion of the EMV format, have been expressly considered.
The claims, however, do not recite an improvement to the operation of the EMV protocol, smart card, mobile device, card network, or another underlying computer technology. Instead, the claimed field, prefix, suffix, unique name, or value represents or identifies the information as an authentication request so that the recited authentication process can be performed using the existing EMV payment processing environment. Thus, the claims use the recited technological components and EMV formatted information to implement the authentication process rather than reciting a technological improvement to those components or to the EMV technology itself.
Applicant’s reliance on Specification ¶ [24], including the disclosure of using currently existing payment processing infrastructure to provide additional functionality, does not establish otherwise. The claim language must itself integrate the exception into a practical application. Here, limiting the authentication process to existing smart card, card network, mobile device, and EMV infrastructure, including specifying where and how an authentication indication is represented within EMV formatted information, generally links the authentication process to a particular technological environment rather than improving the functioning of that technology. The MPEP expressly recognizes that generally linking a judicial exception to a particular technological environment does not, without more, integrate the exception into a practical application.
Applicant also argues that the prior Office Action improperly relied upon whether the additional elements are routine and conventional in the Step 2A, Prong Two analysis. The Examiner agrees that whether an additional element is well-understood, routine, and conventional is not considered in Step 2A, Prong Two. The present rejection does not rely upon such a determination at Prong Two. Rather, all additional elements are given weight and are analyzed individually and in combination to determine whether they integrate the judicial exception into a practical application.
Accordingly, when considered as a whole, the claims do not impose a meaningful limit on the identified judicial exception and do not integrate the judicial exception into a practical application.
Under Step 2B, Applicant further argues that the claims recite significantly more because the smart card, mobile device, card network, EMV formatted information, and authentication flag allegedly interact in an unconventional manner. Applicant contends that using a smart card and existing payment processing infrastructure for an authentication related action, rather than merely processing a financial transaction, provides an inventive concept. Applicant further relies upon Berkheimer v. HP Inc. and argues that whether an element or combination of elements is well-understood, routine, and conventional is a factual determination.
The Examiner has considered these arguments but is not persuaded. As explained in the rejection, the additional computer related elements, including the mobile device, smart card, card network, database, and their information processing and communication functions, are described in the Specification as being implemented using generally available computing and communication technology and performing ordinary functions of receiving, storing, comparing, processing, and transmitting information, (see at least Fig. 4 and ¶¶ [24-25, 29-31, 46-49, 60, 68, 74, 81-87, 92 & 186-191] of the Specification). Accordingly, the conclusion regarding the well-understood, routine, and conventional nature of these additional elements is supported by the Specification and is not based merely upon an unsupported assertion of conventionality. The MPEP expressly permits an examiner to rely upon statements in the Specification showing that additional elements are conventional or sufficiently well known that their particulars need not be described.
The amended authentication flag limitations have also been considered. The authentication flag identifies the information as an authentication request, while the recited prefix, suffix, unique name, or value specifies the data representation through which that indication is conveyed and recognized. These limitations cause the recited computer and payment network components to use the information to perform the underlying authentication process, but do not themselves recite an improvement to the operation of the computer, smart card, mobile device, card network, or EMV protocol.
Applicant’s argument concerning the allegedly unconventional combination has likewise been considered. The relevant inquiry is not limited to whether each additional element is conventional in isolation; the additional elements must also be considered as an ordered combination. The MPEP specifically recognizes that even generic components can potentially amount to significantly more when arranged in a nonconventional and nongeneric manner that provides a technical improvement. Here, however, the claimed ordered combination uses the smart card, mobile device, card network, database, and EMV formatted information to perform the recited authentication process through their claimed information processing and communication functions. The claimed arrangement does not recite a non-generic technological arrangement or provide a technological improvement to the functioning of those components or another technology.
Applicant additionally relies on the disclosure that an authentication flag may indicate that the normal transaction authorization process should be abandoned such that transaction data is not forwarded to an issuer. To the extent Applicant relies upon that disclosure generally, patent eligibility is determined based upon the limitations actually recited in each claim. The independent claims do not require every implementation described in the Specification. Although dependent claim 28 expressly recites that the authentication flag indicates that the transaction data is not for a real transaction and that the typical transaction authorization request process should be abandoned, this limitation has been considered together with the limitations of claim 1 from which claim 28 depends. The limitation further specifies the manner in which the authentication flag affects processing of the transaction data, but does not recite an improvement to the functioning of the card network, EMV protocol, smart card, mobile device, or another technology. Rather, it further defines how the existing payment processing environment is used to carry out the recited authentication process. Accordingly, when the additional elements are considered both individually and as an ordered combination, they do not amount to significantly more than the identified judicial exception. The 35 USC 101 rejection is therefore maintained.
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 1-7, 9-11, 13, 17, 20 and 24-30 are rejected under 35 USC 101 because the claimed invention is directed to an abstract idea without significantly more. The claims fall within at least one of the four categories of patent eligible subject matter because independent claims 1, 10 & 17 are directed to a process; Step 1-Yes.
Under Step 2A, Prong One, representative claim 1 recites a process for authenticating the identity of a user in connection with an authentication related action. The claimed authentication process includes receiving information associated with the user, determining that the information indicates a request for authentication, comparing the received information to stored information associated with the user to authenticate the identity of the user, and, upon successful authentication, providing an indication that the user has been authenticated. These limitations recite the abstract idea of authenticating or verifying the identity of a user in connection with a payment or commercial interaction, which falls within “Certain Methods of Organizing Human Activity” grouping of abstract ideas.
Claim 1 additionally recites that the information is received at a card network from a mobile device, that at least a portion of the information is received from a smart card, that the information is in an EMV format, and that the authentication flag comprises either a first field within the EMV formatted information populated with a predetermined prefix, predetermined suffix, or predetermined unique name indicating a request for authentication, or a second field within the EMV formatted information comprising a value indicating a request for authentication, wherein the second field comprises a portion of the EMV format that is otherwise unused. These limitations describe the particular computer payment network environment and data format in which the authentication process is implemented and are considered below as additional elements under Step 2A, Prong Two. The recited authentication is performed through a card network using information obtained from a smart card in the EMV payment processing environment. Accordingly, the identified limitations concern authentication of a participant through payment processing infrastructure in connection with a commercial interaction and fall within the commercial interactions subgroup of Certain Methods of Organizing Human Activity.
Independent claims 10 and 17 recite analogous authentication concepts implemented from their respective system perspectives and are analyzed under the same premise.
For the above reasoning, the foregoing limitations recite a “Certain Methods of Organizing Human Activity”. The remaining limitations concerning the mobile device, smart card, card network, database, EMV formatted information, and particular placement or encoding of the authentication flag are analyzed as additional elements to determine whether the judicial exception is integrated into a practical application under Step 2A, Prong Two.
Under Step 2A, Prong Two, the judicial exception is not integrated into a practical application. Considered individually and in combination, the additional elements do not reflect an improvement to the functioning of a computer, smart card, mobile device, card network, or EMV technology itself. Rather, the additional elements provide the technological environment and data structures through which the recited authentication process is performed.
In particular, claim 1 recites receiving information form a mobile device, at least a portion of which was received from a smart card, using information in an EMV format, determining an authentication flag contained within a particular field of the EMV formatted information, comparing the information to stored information in a database, and transmitting an authentication indication to the mobile device. The recited predetermined prefix, predetermined suffix, predetermined unique name, or value within an otherwise unused portion of the EMV format specifies how the request for authentication is represented or identified within the information being processed. The claim does not recite a change to the operation of the EMV protocol, the smart card, the mobile device, the card network, or the underlying computer components themselves. Instead, the claimed field or value is used to convey that the information represents a request for authentication so that the recited authentication process may be performed.
Thus, although the claims limit the authentication process to a particular technological environment and specify the format and location of information used to indicate an authentication request, these limitations do not improve the functioning of the computer or another technology. Rather, they use the recited computer and payment network components as tools for implementing the authentication process and generally link the judicial exception to the particular technological environment of smart card and EMV based processing.
The receiving and transmitting of information, to the extent they merely obtain information for use in the authentication process or communicate the result of that process, constitute insignificant extra-solution activity. When the claim is considered as a whole, these limitations, together with the other additional elements discussed above, do not impose a meaningful limit on the judicial exception or otherwise integrate the judicial exception into a practical application. Accordingly, claims 1, 10 and 17 are therefore directed to the abstract idea.
Under Step 2B, the claims do not include additional elements, individually or as an ordered combination, sufficient to amount to significantly more than the judicial exception. The additional computer related elements include the mobile device, smart card, card network, database, and the communication and processing of information between those components. As described in the Specification, these components are implemented using generally available computing and communication technology and perform their ordinary functions of receiving, storing, comparing, processing, and transmitting information (see at least Fig. 4 and ¶¶ [24-25, 29-31, 46-49, 60, 68, 74, 81-87, 92 & 186-191] of the Specification). Accordingly, the recited mobile device, smart card, card network, database, and their generic information processing and communication functions are well-understood, routine and conventional activities in the relevant field.
The additional recitation of EMV formatted information and an authentication flag contained in a particular field has also been considered both individually and in combination with the remaining claim elements. The authentication flag identifies the information as an authentication request, while the recited prefix, suffix, unique name, or value specifies the data representation by which that indication is conveyed and recognized. These limitations cause the recited computer and payment network components to use the information to perform the underlying authentication process, but do not themselves recite an improvement to the operation of the computer, smart card, mobile device, card network, or EMV protocol.
Considered as an ordered combination, the additional elements therefore implement the recited authentication process through the claimed arrangement of computer, smart card, EMV and payment network components performing the recited information processing and communication functions. The ordered combination does not provide a non-generic arrangement that improves the functioning of the computer, smart card, mobile device, card network, EMV protocol, or another technology. Rather, the combination uses the recited components and EMV formatted information to carry out the underlying authentication process. Therefore, the additional elements, individually and as an ordered combination, do not amount to significantly more than the judicial exception. Accordingly, claims 1, 10 and 17 do not recite an inventive concept under Step 2B.
The dependent claims have also been considered individually and as an ordered combination with the limitations of the claims from which they depend. The additional limitations further define the information, communication, graphical interfaces, authentication flag, transaction information, EMV data, or authentication related action used in carrying out the underlying authentication process. These additional limitations do not integrate the judicial exception into a practical application for the reasons discussed above and, when considered individually and as an ordered combination, do not amount to significantly more than the judicial exception.
For the above reasons, when the claims are considered as a whole, the additional elements do not integrate the judicial exception into a practical application under Step 2A, Prong Two, and do not, individually or as an ordered combination, amount to significantly more than the judicial exception under Step 2B. Accordingly, claims 1-7, 9-11, 13, 17, 20 and 24-30 are patent ineligible under 35 USC 101.
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.
Claims 1-4, 9-10, 13, 17, 20, 27 & 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Peter Ho (US 12,288,206 B1, herein Ho) in view of Katherine McHUGH et al. (US 2024/0303630 A1, herein McHUGH) and in further view of Vipul Saini et al. (WO 2024/218652 A1, herein Saini).
As per claim 1, Ho teaches a method for authenticating a user, the method comprising:
receiving, first information at a card network from a mobile device, wherein the mobile device received at least a portion of the first information from a smart card, […] (See Ho Fig. 3 at 306, column 4 lines 57-67, column 5 lines 1-27 and column 8 lines 48-65);
determining, at the card network, that the first information comprises an authentication flag […] (Ho column 6 lines 12-39);
authenticating, by the card network, an identity of the user by comparing the first information to second information associated with the user and stored in a database (Ho column 6 lines 25-39, column 9 lines 2-22 and column 10 lines 18-33) (see also McHUGH ¶¶ [50, 58, 73, 77 & 86] teach this limitation as well); and
Ho does not explicitly disclose the following limitations, however, McHUGH teaches:
receiving, first information at a card network from a mobile device, wherein the mobile device received at least a portion of the first information from a smart card, [and the first information is in a Europay-Mastercard-Visa (EMV) format] (McHUGH ¶¶ [46-47]);
determining, at the card network, that the first information comprises an authentication flag added by the mobile device (McHUGH ¶¶ [18-20 & 83]);
It would have been obvious to a person of ordinary skill in the art at the time of the invention to modify Ho to utilize EMV-formatted transaction data as taught by McHUGH in order to standardize data formatting and ensure compatibility and interoperability with existing payment network infrastructure. Using EMV-compliant data structures for encoding authentication-related information represents a predictable use of known elements according to their established functions.
The combination of Ho and McHUGH do not explicitly disclose the particular placement of the authentication flag within the EMV formatted information. However, Saini further teaches utilizing available space and discretionary fields within an EMV compatible data object for carrying additional authorization information. Specifically, Saini teaches encapsulating information into discretionary data fields of a data object compatible with the EMV technical protocol, fitting such information within available space in the EMV communication protocol, and encapsulating authorization information within a discretionary field of an EMV standard data object (Saini ¶¶ [57-58, 63, 66 & 68].
It would have been obvious to one of ordinary skill int the art before the effective filing date of the claimed invention to modify the combination of Ho and McHUGH with the teachings of Saini by providing the authentication indicating value within an available discretionary portion of the EMV formatted information. Saini teaches using available space and discretionary fields of an EMV compatible data object to accommodate additional authorization information while maintaining compatibility with existing EMV infrastructure. One of ordinary skill in the art would have been motivated to make such a modification to permit the authentication information of the combined system to be communicated using the existing EMV format and infrastructure without requiring modification of the underlying EMV protocol.
and
McHUGH further teaches:
responsive to successfully authenticating the identity of the user, transmitting, from the card network, an indication of the authentication of the identity of the user to the mobile device, the indication used by the mobile device to complete an authentication-related action (McHUGH ¶¶ [89, 97 & 105]).
As per claims 10 & 17, the claims recite analogous limitations as claim 1 above and rejected under the same premise.
As per claim 3, the combination of Ho, McHUGH & Saini teach the method of claim 1, Ho further teaches: wherein:
the first information is transmitted to the card network from the mobile device via an acquirer, and the acquirer determines the card network from a plurality of card networks (Ho column 8 lines 48-67, column 9 lines 1-22 & column 10 lines 18-33).
As per claim 4, the combination of Ho, McHUGH & Saini teach the method of claim 3, Ho further teaches:
wherein the identity information is not transmitted to the mobile device via the acquirer (Ho column 6 lines 7-24 and column 10 lines 1-17 & 34-50).
As per claim 9, the combination of Ho, McHUGH & Saini teach the method of claim 1, Ho further teaches:
wherein the second information associated with the user comprises communication information, and the card network transmits the identity information to a mobile application on the mobile device using the communication information (Ho column 9 lines 1-22 & column 10 lines 18-33).
As per claim 20, the combination of Ho, McHUGH & Saini teach the method of claim 17, Ho and McHUGH
further teach: wherein: the identity information is transmitted to the mobile device directly; the mobile device receives the first information from the smart card via near field communication (NFC); and the first information is generated by an EMV applet on the smart card (Ho column 4 lines 4-20, column 5 lines 28-55, column 9 lines 54-67 & column 10 lines 1-17) (McHUGH ¶¶ [18-20, 41, 47, 53-55, 69-70, 76 & 88]).
As per claims 2 & 13, the claims recite analogous limitations as claim 20 above and rejected under the same premise.
As per claim 27, the combination of Ho, McHUGH & Saini teach the method of claim 10, Saini further teaches wherein generating the second data comprises:
generating, by the mobile device, transaction data in the EMV format (Saini ¶¶ [50, 57-58, 63, 66, 68 & 78]); and
inserting the authentication flag into the transaction data in the EMV format (Saini ¶¶ [44, 63 & 66-68]).
As per claim 29, the combination of Ho, McHUGH & Saini teach the method of claim 1, Saini further teaches wherein: the portion of the EMV format that is otherwise unused comprises a data cell (Saini ¶¶ [5, 57-58, 63, 66, 68, 82-83 & 89]).
As per claim 30, the combination of Ho, McHUGH & Saini teach the method of claim 1, Ho further teaches wherein: the authentication-related action comprises one of: providing second level authentication to an application on a device, providing a user access to an application on a device, launching an application on a device, activating an application on a device, downloading an application to a device, accessing restricted information on a device, making a purchase using an application of a device, making a purchase of a certain value, activating the smart card for EMV transactions, or combinations thereof (Ho column 6 lines 25-39 & column 7 lines 12-36).
Claims 5-7, 24 & 26 are rejected under 35 U.S.C. 103 as being unpatentable over Ho in view of McHUGH in view of Saini and in further view of Erik T. Bogaard (US 10,339,525 B2).
As per claim 5, the combination of Ho, McHUGH & Saini teach the method of claim 1, It can be argued the combination of Ho, McHUGH & Saini do not explicitly teach the following limitation; however, Bogaard teaches:
wherein the identity information is transmitted from the card network to the mobile device directly (Bogaard column 36 lines 38-65).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the combination of Ho and McHUGH with the confirmation of local marketplace transaction consummation for payment consummation of Bogaard in order to accept mobile payment from devices that are not themselves NFC-enabled (See Bogaard abstract, column 25 lines 65-67 and column 26 lines 1-3).
As per claim 6, the combination of Ho, McHUGH & Saini teach the method of claim 1, It can be argued the combination of Ho and McHUGH do not explicitly teach the following limitation; however, Bogaard teaches:
wherein the authentication flag prevents the first information from being transmitted to an issuer (Bogaard column 35 lines 17-26, column 42 lines 6-15 & 23-51 and column 43 lines 4-12 & 35-45).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the functionality taught by Bogaard, into the system of Ho and McHUGH, in order to control transmission of transaction data and improve security by selectively preventing transmission of certain data to an issuer, which represents a predictable use of known data control techniques.
As per claim 7, the combination of Ho, McHUGH & Saini teach the method of claim 1, the combination does not explicitly disclose the following limitation, however, Bogaard teaches:
wherein the first information comprises a zero-amount authorization in addition to the authentication flag (Bogaard column 43 lines 13-26 and Fig. 14 at 1914).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include a zero-amount authorization in addition to an authentication flag, as taught by Bogaard, into the system of Ho, McHUGH & Saini in order to enable validation or authentication without initiating a financial transaction, which improves system flexibility and is a known practice in payment systems.
As per claim 24, the claim recites analogous limitations as claim 7 above and rejected under the same premise.
As per claim 26, the combination of Ho, McHUGH & Saini teach the method of claim 1, the combination does not explicitly disclose the following limitation, however, Bogaard further teaches wherein: the value comprises a binary value (Bogaard column 39 lines 28-67).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Ho, McHUGH & Saini with the teachings of Bogaard by representing the authentication indicating value as a binary value. Bogaard teaches the use of a binary string as an identifier in an authentication system. One of ordinary skill in the art would have been motivated to utilize such binary representation as a known and predictable manner of encoding an identifier or value for processing by the authentication system.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Ho in view of McHUGH in view of Saini and in further view of Ayokunle Omojola et al. (CA 3037671 A1).
As per claim 11, the combination of Ho, McHUGH & Saini teach the method of claim 10, Ho further teaches: further comprising:
receiving, from the user, via a first graphical user interface on a mobile application on the mobile device, an action requiring authentication (Ho column 5 lines 4-27 and column 6 lines 25-39);
generating, at the mobile device, a second graphical user interface, requesting the user locate the smart card near the mobile device (Ho column 5 lines 27-55 and column 9 lines 30-45); and
displaying the second graphical user interface on a display of the mobile device (Ho column 7 lines 37-62);
The combination of Ho, McHUGH & Saini do not explicitly teach the following limitations, however, Omajola teaches further comprising:
responsive to receiving the identity information from the card network authenticating the user, generating, at the mobile device, a third graphical user interface showing that the user is authenticated (Omajola Fig. 12E and ¶¶ [116-117]); and
displaying the third graphical user interface on the display of the mobile device (Omajola Fig. 12E and ¶¶ [116-117]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the combination of Ho, McHUGH & Saini with the teachings of Omojola to provide a graphical indication showing successful authentication, in order to provide the user with visual confirmation that the authentication process has been successfully completed (See Omajola ¶¶ [21 & 116-117]).
Claims 25 & 28 are rejected under 35 U.S.C. 103 as being unpatentable over Ho in view of McHUGH in view of Saini and in further view of Robert Albert Ederle et al. (CN 110633986 A, herein Ederle).
As per claim 25, the combination of Ho, McHUGH & Saini teach the method of claim 1.
Saini further teaches utilizing a field within the transaction data for an identifier, including a destination identifier (Saini ¶ [59]). The combination does not explicitly teach wherein the first field comprises a merchant field. Ederle further teaches transaction authentication data comprising merchant identifying information, including a merchant name, merchant category, and merchant location (Ederle pages 5 & 13).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the identifier field taught by Saini to comprise a merchant field using the merchant identifying information taught by Ederle. Saini teaches the use of a field for carrying identifying information, while Ederle teaches merchant identifying information associated with transaction authentication. One of ordinary skill in the art would have recognized that utilizing the field to identify the merchant represents a predictable use of the field for carrying transaction related identifying information and would permit the authentication information to be associated with the corresponding merchant. Such modification amounts to the predictable application of known transaction identifying information within a known transaction data field.
As per claim 28, the combination of Ho, McHUGH & Saini teach the method of claim 1. Ho further teaches that the authentication information indicates that the transaction is being used for authentication rather than for completing a conventional financial transaction (Ho column 5 lines 56-67 and column 6 lines 1-24). However, the combination does not explicitly teach that the authentication flag indicates that the typical transaction authorization request process should be abandoned.
Ederle further teaches terminating a transaction authorization process based on authentication information, wherein the authorization message is not transmitted by the payment processing network and the transaction is thereby terminated (Ederle English translation, page 23).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the authentication process of Ho, McHugh and Saini in view of Ederle such that, when the authentication flag indicates that the transaction data is for an authentication request rather than a real transaction, the typical transaction authorization process is abandoned and the authorization request is not further transmitted through the payment processing network. Ederle teaches terminating authorization processing and preventing further transmission when continued transaction authorization is unnecessary. One of ordinary skill in the art would have been motivated to apply this transaction termination technique to the authentication only transaction of Ho, McHugh, and Saini to avoid unnecessarily processing and transmitting an authorization request that is not intended to complete a real transaction. Such modification represents the predictable application of Ederle’s transaction termination technique to the authentication only transaction of the combined system.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TONY P KANAAN whose telephone number is (571)272-2481. The examiner can normally be reached Monday- Friday 7:30am - 3:30 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart can be reached at 5712723955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/T.P.K./Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696
