DETAILED CORRESPONDENCE
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 .
Acknowledgment
This action is in response to the amendment filed on March 16, 2026. Claims 1-20 are currently pending and have been fully examined.
Response to Arguments
With respect to the claim objection, the amendment overcomes the objection and the objection is withdrawn.
With respect to the rejection under 35 USC 101, Applicant argues, on page 10 of the remarks and with respect to Step 2A Prong 1, that the claims “involve or rely upon” a judicial exception without reciting one. Applicant further refers to the August 4, 2025, USPTO memorandum comparting USPTO published examples 39 and 47 for the analysis where claim “involves or relies on a judicial exception vs when the claim recites a judicial exception.
The examiner respectfully disagrees with the application of above analysis on the present claims and notes that the referred analysis is considering the first group of abstract ides, that is “Mathematical concepts.” However, according to the MPEP 2106.4(a), three groups of abstract ideas are defined. In the analysis performed in this Office Action, the claims are categorized under the second group of abstract ideas, “Certain methods of organizing human activity,” because the claims do not involve mathematical concepts, but describe receiving data from a source (i.e., identity broker) and presenting the received data to a requestor. The claimed features clearly fall within the definition of the second group of abstract ideas “commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).”
Applicant further argues, on page 12 of the remarks and with respect to Step 2A, Prong II, that the sole standard for this Prong is not whether the claim purports to improve computer capabilities but improvement to any other technology or technical field is sufficient to meet the standard. Applicant concludes that the present claims integrate judicial exception into a practical application.
The examiner respectfully disagrees and notes that according to MPEP 2106.05(a): “an important consideration in determining whether a claim improves technology is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome.” The examiner notes that the claims do not cover a particular solution to a problem or a particular way to achieve a desired outcome, because the amended claim merely recites that an electronic identification instrument “is bundled” with payment information, and this claim recitation does not sufficiently describe a solution to a technical problem.
Applicant further argues, on page 14 of the remarks and with respect to Step 2B, that the claims recite significantly more than the judicial exception, stating that the language “presenting, by the wallet application of the user device, the first electronic identification instrument and the first electronic token … wherein the first electronic identification instrument is bundled together with the electronic payment information,” is not conventional activity for the relevant industry and represents an inventive concept. The examiner respectfully notes that whether a claimed feature is “inventive” or not is not within the scope of 101. A concept may be inventive but still an abstract idea. In addition, the examiner notes that presenting or sending a package or a batch of data bundled together is a well understood routine not only in a specific industry but in general in the field of data processing.
With respect to the rejections under 35 USC 103, Applicant argues that the cited prior art fails to teach the amended claims. The examiner respectfully disagrees and notes that Zaytzsev at least in [0053], [0064] teaches that the wallet identifying data (electronic identification instrument) identifies the consumer payment account. Therefore, according to Zaytzsev, consumer payment account identifier is incorporated into the wallet identifying data which is interpreted as the wallet electronic identification being bundled with the electronic payment information.
The examiner further notes that neither the claim nor the Specification, provide a definition for the “bundling.” Therefore, the wallet identifying data of Zaytzsev which also identifies payment information is interpreted as a bundle that provides at least the two identifications.
Claim Objections
With respect to the claims 2, 9 and 16 each claim recites “…payment information is presented with the first electronic identification instrument.” (emphasis added) On the other hand, the amended claims 1, 8 and 15 recite: “storing, by the wallet application, electronic payment information” and “the first electronic identification instrument is bundled together with the electronic payment information.” (emphasis added) This causes confusion as to whether the “payment information” in claims 2, 9, and 16 refers to the “electronic payment information” of claims 1, 8 and 15 or different payment information. In order to avoid a 112(b) rejection for unclear scope, clarification is required.
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 a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1-7 are directed to a method (process), claims 8-14 are directed to a system (product) and claims 15-20 are directed to a non-transitory computer-readable storage medium (product). Therefore, these claims fall within the four statutory categories of invention.
Claims 1-20 are directed to the abstract idea of receiving data from a source (i.e., identity broker) and presenting the received data to a requestor, as explained in detail below. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Analysis
In the following analysis, bolded text indicates abstract idea and the rest of the text indicates additional elements. Independent claims 1, 8 and 15, recite:
receiving, by a wallet application of a user device, a first electronic identification instrument of a user and a first electronic token for the first electronic identification instrument from an identity broker, wherein the first electronic token validates an authenticity of the first electronic identification instrument and the first electronic identification instrument comprises a certified digital image of a first personal identification card of the user; and
storing, by the wallet application, electronic payment information;
presenting, by the wallet application of the user device, the first electronic identification instrument and the first electronic token to a wallet reader of a requestor as part of an online transaction involving the requestor, wherein the first electronic identification instrument is bundled together with the electronic payment information.
The claim recitation is directed to receiving data from a source (i.e., identity broker) and presenting the received data to a requestor. Therefore the claims recite a fundamental economic principle or practice grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP 2106) because the claims involve a series of steps for receiving data from a source (i.e., identity broker) and presenting the received data to a requestor. Accordingly, the claims recite an abstract idea (See MPEP 2106).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106), the additional elements of a wallet application, a user device, electronic identification instrument, electronic token, digital image, wallet reader, a computing device comprising a processor and a memory, and a non-transitory computer-readable medium, merely use one or more computers as tool to perform the abstract idea. The use of a wallet application, a user device, electronic identification instrument, electronic token, digital image, wallet reader, a computing device comprising a processor and a memory, and a non-transitory computer-readable medium, does not integrate the abstract idea into a practical application because it requires no more than one or more computing devices performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) ). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106), the additional elements amount to no more than using computing devices or processors to automate and/or implement the abstract idea.
As discussed above, taking the claim elements separately, these additional elements perform the steps or functions that correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the abstract idea.
Dependent claims 2, 9 and 16 recite:
wherein payment information is presented with the first electronic identification instrument and the first electronic token to the requestor as part of the online transaction,
which further describes the abstract idea. The claims do not recite any new additional elements for consideration under Step 2A, prong 2 or Step 2B, and therefore is ineligible.
Dependent claims 3, 10 and 17 recite:
wherein the first personal identification card comprises a driver's license card, a health insurance card, a passport, or a club membership card,
which further describes the abstract idea. The claims do not recite any new additional elements for consideration under Step 2A, prong 2 or Step 2B, and therefore is ineligible.
Dependent claims 4, 11 and 18 recite:
wherein the certified digital image is embossed with a security feature of the identity broker,
which further describes the abstract idea. The claims do not recite any new additional elements for consideration under Step 2A, prong 2 or Step 2B, and therefore is ineligible.
Dependent claims 5, 12 and 19 recite:
storing the first electronic identification instrument and the first electronic token within a secure element of the user device.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test, the additional element of secure element of the user device, merely use one or more computers as tool to perform the abstract idea. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test the additional element, amounts to no more than using computing devices or processors to automate and/or implement the abstract idea, i.e., “apply it.”
Dependent claims 6 and 13 recite:
encrypting the first electronic identification instrument and the first electronic token before storing the first electronic identification instrument and the first electronic token on the secure element of the user device.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test, the additional elements of encrypting, merely use one or more computers as tool to perform the abstract idea. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test the additional element, amounts to no more than using computing devices or processors to automate and/or implement the abstract idea, i.e., “apply it.”
Dependent claims 7, 14 and 20 recite:
storing a second electronic identification instrument of the user and a second electronic token in association with the second electronic identification instrument, wherein the second electronic token is different from the first electronic token,
which further describes the abstract idea. The claims do not recite any new additional elements for consideration under Step 2A, prong 2 or Step 2B, and therefore is ineligible.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-4, 8-11 and 15-18 and are rejected under 35 U.S.C. 103 as being unpatentable over Zaytzsev et al. (US Patent Publication No. 2014/0229375) in view of Wilczynski (US Patent Publication No.: 2016/0180332.)
With respect to claims 1, 8 and 15, Zaytzsev et al. teaches:
receiving, by a … application of a user device, a first electronic identification instrument of a user and a first electronic token for the first electronic identification instrument from an identity broker, (an application on the consumer device receives wallet identifying data/token (electronic token) associated with consumer identifying data (electronic identification instrument) from a central system (i.e. identity broker): FIG. 1a, item 102, the wallet identifying data includes wallet identifying tokens: [0052], [0075], the wallet identifying tokens may be associated with a consumer (e.g., via consumer identifying data, a consumer payment account, and/or a consumer device identifier (i.e., first electronic identification instrument)): [0047], [0054], [0078])
wherein the first electronic token validates an authenticity of the first electronic identification instrument, (the central system validates and authenticates data using the wallet identification token: [0067])
storing, by the wallet application, electronic payment information; (consumer payment account data is stored in a database and downloaded by the consumer device (stored): [0071], [0074]-[0075])
presenting, by the … application of the user device, the first electronic identification instrument and the first electronic token to a wallet reader of a requestor as part of an online transaction involving the requestor. (consumer device sends wallet identifying data to a merchant device: [0055], [0086], online transaction: [0052])
wherein the first electronic identification instrument is bundled together with the electronic payment information; (the wallet identifying data (electronic identification instrument) is configured to identify consumer payment account (bundled with payment information): [0053], [0064])
The examiner notes that the claim recitation “wherein the first electronic identification instrument is bundled…” indicates not-positively recited language, because the “bundling” function is not positively recited, and therefore does not further limit the scope of the claim.
In addition, the examiner notes that neither the claim nor the Specification, provide a definition for “bundling.” Therefore, the wallet identifying data which also identifies payment information is interpreted as a bundle that provide at least the two identifications.
Zaytzsev et al. do not explicitly teach; however, Wilczynski teaches:
a wallet application, (digital wallet software application on client device: [0025])
the first electronic identification instrument comprises a … digital image of a first personal identification card of the user; (a photo of an identification card of the user is stored in the wallet: [0021], [0057]-[0058])
In addition, Wilczynski teaches:
storing, by the wallet application, electronic payment information; (FIG. 2, [0025]-[0026])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to incorporate an image of a physical identification card added to a digital wallet, as taught by Wilczynski, into the consumer identifying data for the payment token management system of Zaytzsev et al., in order to avoid carrying the physical cards, while using the card information for identifying the user. (Wilczynski, Abstract, [0002])
The examiner notes that although Zaytzsev et al. and Wilczynski do not explicitly teach that the digital image is “certified” the fact that the image is certified is not given patentable weight, because first, the “certifying” of the digital image is not positively recited, and secondly, whether the image is certified or not does not have any effect on any of the claimed features.
With respect to claims 2, 9 and 16 Zaytzsev et al. and Wilczynski teach the limitations of claims 1, 8 and 15.
Moreover, Zaytzsev et al. teach:
wherein payment information is presented with the first electronic identification instrument and the first electronic token to the requestor as part of the online transaction. (transaction data (i.e., payment information) is sent as part of the transaction: [0054], [0150])
With respect to claims 3, 10 and 17 Zaytzsev et al. and Wilczynski teach the limitations of claims 1, 8 and 15.
Moreover, Wilczynski teaches:
wherein the first personal identification card comprises a driver's license card, a health insurance card, a passport, or a club membership card. ([0021])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to incorporate adding information about a physical identification card to a digital wallet, as taught by Wilczynski, into the payment token management system of Zaytzsev et al., in order to avoid carrying the physical cards. (Wilczynski, Abstract, [0002])
The examiner notes that the claim recitation “wherein the first personal identification card comprises a driver's license card, a health insurance card, a passport, or a club membership card,” indicates non-functional descriptive material and therefore does not further limit the scope of the claim.
With respect to claims 4, 11 and 18, Zaytzsev et al. and Wilczynski teach the limitations of claims 1, 8 and 15.
Zaytzsev et al. and Wilczynski do not explicitly teach:
wherein the certified digital image is embossed with a security feature of the identity broker.
However, the claim recitation indicates a not positively recited function, because the “embossing” function is not positively recited. In addition, the claim recitation indicates non-functional descriptive material because the fact that the image is embossed does not affect any of the claimed features. Therefore the claim recitation does not further limit the scope of the claim.
Claims 5-7, 12-14, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Zaytzsev et al. in view of Wilczynski, as applied to claims 1, 8 and 15 above, further in view of Aabye et al. (US Patent Publication No. 2015/0120472.)
With respect to claims 5, 12 and 19, Zaytzsev et al. and Wilczynski teach the limitations of claims 1, 8 and 15.
Zaytzsev et al. and Wilczynski do not explicitly teach; however Aabye et al. teach:
storing the first electronic identification instrument and the first electronic token within a secure element of the user device. ([0039]-[0040], [0067], [0069], [0079])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to incorporate the feature of Aabye et al. for storing digital wallet data in a trusted environment, into the payment token management system of Zaytzsev et al. and Wilczynski, in order to reduce security risks to sensitive user credentials. (Aabye et al. , Abstract, [0005])
With respect to claims 6 and 13, Zaytzsev et al. and Wilczynski and Aabye et al. teach the limitations of claims 5 and 12.
Moreover, Zaytzsev et al. teach:
encrypting the first electronic identification instrument and the first electronic token…([0066]-[0067])
In addition, Aabye et al. teach:
encrypting the first electronic identification instrument and the first electronic token before storing the first electronic identification instrument and the first electronic token on the secure element of the user device. ([0067])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to incorporate the feature of Aabye et al. for encrypting data before storing in a trusted environment, into the payment token management system of Zaytzsev et al. and Wilczynski, in order to reduce security risks to sensitive user credentials. (Aabye et al. , Abstract, [0005])
With respect to claims 7, 14 and 20, Zaytzsev et al. and Wilczynski and Aabye et al. teach the limitations of claims 5, 12 and 19.
Moreover, Zaytzsev et al. teach:
In addition, Aabye et al. teach:
storing a second electronic identification instrument of the user and a second electronic token in association with the second electronic identification instrument, wherein the second electronic token is different from the first electronic token. (user may be represented by two separate instances of digital wallet identifier, first instance and second instance: Claim 7, [0085], multiple different tokens associated with the digital wallet identifiers are securely stored: [0031], [0037], [0069], [0088])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to incorporate the feature of Aabye et al. for tracing plurality of payment tokens associated with multiple instances of wallet identifier, into the payment token management system of Zaytzsev et al. and Wilczynski, in order to link different user accounts. (Aabye et al.: Abstract, [0006])
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Klingen (US 2016/0180319) teaches a wallet application that sends wallet identifying information together with customer’s account information to a payment gateway.
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 SIMA ASGARI whose telephone number is (571)272-2037. The examiner can normally be reached M-F 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patrick McAtee can be reached at (571)272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SIMA ASGARI/Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698
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