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 .
Status of Claims
This action is in reply to the response filed on May 8, 2026.
Claims 1, 3, 8, 10, 12, 17, and 18 are amended.
Claim(s) 1-20 are currently pending and have been examined.
This action is made Non-Final.
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 8, 2026 has been entered.
Response to Arguments
Applicant argued that Examiner’s 101 rejection was improper because the claimed invention does not qualify as a fundamental economic practice or principle. Examiner disagrees. Applicant’s claimed invention, as amended, qualifies as a commercial or legal transaction because the claimed invention is the execution of a transaction over a network. Commercial or legal interactions fall under the enumerated grouping of abstract ideas described as certain methods of organizing human activity. Therefore, Applicant’s claimed invention is considered abstract, and Examiner finds Applicant’s argument non-persuasive.
Applicant argued that Examiner’s 101 rejection was improper because the claimed invention integrates the purported abstract idea into a practical application. Examiner disagrees. Applicant’s claimed invention does not integrate the abstract idea into a practical application because the additional limitations in Applicant’s claimed invention do not improve the functioning of the computer or any other technology. It also does not apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. Applicant argued that the computer functionality is improved because the second device is enabled to complete a transaction that it is technically incapable of supporting. Examiner responds by noting that the functionality of the second device remained unchanged by the claimed invention. It is still technically unable to execute the transaction with the user’s credentials. Applicant’s claimed invention provides a work-around to compensate for the technical limitations of the second device. It cannot, therefore, be argued that the second device demonstrates any technical improvement. Examiner finds Applicant’s argument non-persuasive.
Applicant argued that Examiner’s 101 rejection was improper because the claimed invention meaningfully limits the judicial exception, in accordance with MPEP 2106.05(e). Examiner disagrees. As previously stated, Applicant’s claimed invention does not meaningfully limit the judicial exception. The additional elements in Applicant’s claimed invention are merely tools to implement the abstract idea. Therefore, Examiner finds Applicant’s argument non-persuasive.
Applicant argued that Examiner’s 101 rejection was improper because the additional recitations meaningfully limit the application of the asserted judicial exception to a specific application, similar to the claimed invention in Classen Immunotherapies Inc v. Biogen IDEC. Examiner disagrees. The Classen case was decided in 2011 based on guidance provided in Bilski v. Kappos. Patent-eligibility guidance has since been updated to the Alice 2-step rule. Furthermore, the subject matter in Classen (i.e. immunization schedules) is far different from the subject matter presented in the claimed invention at issue. In Classen, it even states that, “…while the exclusion from patentability of abstract principle and fundamental truth is well established in the common law, the boundary between abstract principle and practical application may vary with the subject matter” (Classen: pg. 13). In the present case, boundary for immunization schedules varies from the boundaries set forth for electronic transaction. Applicant’s claimed invention fails the Alice test for patent eligibility because the additional limitations do not integrate the recited abstract idea into a practical application or provide significantly more than the abstract idea itself. For these reasons, Examiner finds Applicant’s argument non-persuasive.
Applicant argued that Examiner’s 101 rejection was improper because the claimed invention recited an inventive concept that is significantly more than the purported abstract idea itself by reducing the number of steps to complete a transaction when a payment provider is not supported on the first user device. Examiner disagrees. Applicant used the CosmoKey Solutions case to support a position in favor of patent eligibility. However, the claimed invention in CosmoKey Solutions is distinguishable from Applicant’s claimed invention because Applicant’s claimed invention does not improve an authentication method. Applicant’s claimed invention is directed towards an abstract process for routing a transaction through a second device when a first device is unable to complete the process. Any improvement found in Applicant’s claimed invention lies in the abstract commercial interaction that it describes, and an improved abstract idea is nonetheless abstract. Therefore, Examiner finds Applicant’s argument non-persuasive.
Applicant argued that Examiner’s 101 rejection was improper because the claimed invention includes an improvement to a computer or to a technological field. Examiner disagrees. Applicant’s claimed invention does not improve a computer or a technological field. Applicant’s claimed invention merely uses the computer and computer components to implement an abstract idea. Therefore, Examiner finds Applicant’s argument non-persuasive.
Applicant argued that the prior art did not teach or suggest limitations for, “responsive to a determination that the second user device does not support the payment provider, receiving, by the digital wallet application and from the first server, transaction information corresponding to the transaction; providing, by the digital wallet application and through the encrypted communication channel to the first server, the encrypted payment credential to the first server for use in completing the transaction on behalf of the first user device; and receiving, by the digital wallet application and from the first server, a result of the transaction performed using the encrypted payment credential,” as required by independent claim 1. Examiner disagrees. The prior art in Dicker, in combination with the prior art in Gisolfi, teaches “responsive to a determination that the second user device does not support the payment provider, receiving, by the digital wallet application and from the first server, transaction information corresponding to the transaction; providing, by the digital wallet application and through the encrypted communication channel to the first server, the encrypted payment credential to the first server for use in completing the transaction on behalf of the first user device; and receiving, by the digital wallet application and from the first server, a result of the transaction performed using the encrypted payment credential,” as cited below. Therefore, Examiner finds Applicant’s arguments non-persuasive.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim(s) 1-20 are directed to a system, method, or product, which are/is one of the statutory categories of invention. (Step 1: YES).
The Examiner has identified independent system claim 10 as the claim that represents the claimed invention for analysis and is similar to independent method Claim 1 and product Claim 18. Claim 10 recites the following limitations:
[a memory; and]
[a camera;]
[a processor configured to:]
scan, [by the camera,] a machine-readable code presented [at a user interface associated with a merchant application initiated at a second user device], the machine-readable code encoding information including a session identifier that is unique to a transaction and for establishing an encrypted communication channel;
launch, [by the first user device, a digital wallet application];
establish, using the session identifier and via a first server acting as a relay, the encrypted communication channel between the first user device and the second user device, the encrypted communication channel being end-to-end encrypted between the first user device and the second user device to enable the first user device to provide transaction authorization for the merchant application initiated at the second user device, wherein the, [first server] is associated with a payment provider, being used in a transaction with the merchant application;
responsive to the payment provider being unsupported for the transaction at the second user device,
receive, [by the digital wallet application and from the first server,] transaction information corresponding to the transaction;
encrypt, [by a secure element of the first user device that is hardware-isolated from a host processor and an operating system of the first user device,] a payment credential [using a hardware-specific private key stored in tamper-resistant memory];
provide, [by the digital wallet application and] through the encrypted communication channel to the first server, the encrypted payment credential to the first server for relay to the second user device for use in completing the transaction on behalf of the first user device; and
receive, [by the digital wallet application and from the first server,] a result of the transaction performed using the encrypted payment credential, wherein the encrypted communication channel enables the first user device and the second user device to interoperate for the transaction.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity because the limitations recite commercial or legal interactions. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a commercial or legal interaction, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. The memory, processor, user interface, digital wallet application, merchant application, first server, camera, hardware-specific private key stored in tamper-resistant memory, second user device, and first user device in Claim 10 are just applying generic computer components to the recited abstract limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. Claim(s) 1 and 18 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims recite an abstract idea)
This judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements of a memory, a processor, a user interface, a digital wallet application, a merchant application, a first server, a camera, a hardware-specific private key stored in tamper-resistant memory, a second user device, and a first user device. The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. Therefore, claim(s) 1, 10, and 18 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Accordingly, these additional elements do not change the outcome of the analysis when considered separately and as an ordered combination. Thus, claim(s) 1, 10, and 18 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims 2-9, 11-17, and 19-20 further define the abstract idea that is present in their respective independent claim(s) 1, 10, and 18 and thus correspond to certain methods of organizing human activity and hence are abstract for the reasons presented above. Dependent claims 2-9, 11-17, and 19-20 do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, dependent claims 2-9, 11-17, and 19-20 are directed to an abstract idea. Thus, claim(s) 1-20 are not patent-eligible.
Claim Rejections - 35 USC § 103
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.
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 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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Dicker (US 2022/0318798) in view of Gisolfi (US 2024/0086918).
Regarding claim(s) 1, 10, and 18:
Dicker teaches:
a memory; and (Dicker: Fig. 2, item 104)
a processor configured to: (Dicker: Fig. 2, item 102)
launch, by the first user device, a digital wallet application; (Dicker: pgh 125, “…NFC processor module of NFC controller module may be used to run one or more applications, such as an NFC low power mode or wallet application…”)
establish, using the session identifier and via a first server acting as a relay, the encrypted communication channel between the first user device and the second user device, the encrypted communication channel being end-to-end encrypted between the first user device and the second user device to enable the first user device to provide transaction authorization for the merchant application initiated at the second user device, wherein the first server is associated with a payment provider being used in a transaction with the merchant application; responsive to the payment provider being unsupported for the transaction at the second user device, (Dicker: pgh 39, “NFC controller module may include at least one NFC processor module that may be used to run one or more applications, such as an NFC low power mode or wallet application…”; pgh 68, “For example, such host credential data 654 may be at least partially provisioned on secure element 145 of host device 100 directly from financial institution subsystem 350 (e.g., via communication path 75 of FIG. 1B between financial institution subsystem 350 and device 100, which may be passed to secure element 145 via communications component 106); pgh 51, “GlobalPlatform, or any other suitable secure channel protocol, may enable SMP TSM component 450 to properly communicate and/or provision sensitive account data between secure element 145 of device 100 and a TSM for secure data communication between commercial entity subsystem 400 and financial institution subsystem 350.”; pgh 52, “Such a service may provide an end-to-end encrypted mechanism…”)
a camera; (Dicker: pgh 137, “Electronic device may also include at least…a camera and/or scanner input component…”)
scan, by the camera, a machine-readable code presented at a user interface of a merchant application, the machine-readable code encoding information including a session identifier for establishing an encrypted communication channel; (Dicker: pgh 74, “…any host device within a particular distance of client device 100’ that may be operative to communicate using a particular communication protocol of the beacon or a beacon may be a quick response…code or any other suitable code that may be presented by client device 100’ and read by a scanner of one or more host devices…”)
receive, by the digital wallet application and from the first server, transaction information corresponding to the transaction; (Dicker: pgh 77, “…at step 616 of process 600, client device 100’ may communicate payment request data 666 to at least one particular host device 100…”)
Dicker does not teach, however, Gisolfi teaches:
encrypt, by a secure element of the first user device that is hardware-isolated from a host processor and an operating system of the first user device, a payment credential using a hardware-specific private key stored in tamper-resistant memory; (Gisolfi: pgh 3, “…a computing platform that involves…encrypted credential information …wherein the credential information is encrypted using a private key…”)
provide, by the digital wallet application and through the encrypted communication channel to the first server, the encrypted payment credential to the first server for relay to the second user device for use in completing the transaction on behalf of the first user device; and (Gisolfi: pgh 33, “The DTC may then be stored in a digital wallet on a consumer client device such that the consumer can elect to present the DTC to a merchant during a card-not-present transaction.”; pgh 3, “…a computing platform that involves…encrypted credential information…”; pgh 48, “The authentication challenge may take various forms, such as a QR code that may be displayed via a consumer client device that was used to initiate the transaction…and then scanned by a consumer client device that includes the digital wallet…”)
receive, by the digital wallet application and from the first server, a result of the transaction performed using the encrypted payment credential, wherein the encrypted communication channel enables the first user device and the second user device to interoperate for the transaction. (Gisolfi: pgh 71, “Further, the updated payment information may be presented along with a selectable option (e.g., a “Confirm” or “Submit” button) for the consumer to submit a request to the merchant computing platform to confirm the updated payment and complete the transaction.”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Dicker ‘798 to include the teachings of Gisolfi because there is a need to verify a cardholder’s identity to authenticate a credit card transaction and reduce fraud (Gisolfi: pgh 1).
Regarding claim(s) 2, 11, and 19:
The combination of Dicker/Gisolfi, as shown in the rejection above, discloses the limitations of claims 1, 10, and 18. Dicker further teaches:
wherein establishing the encrypted communication channel with the first server is responsive to scanning, by the camera of the first user device, the machine-readable code. (Dicker: pgh 38, “…processor 102 may be used to run one or more applications, such as an application 103 and/or an application 113…application 113 may be a third-party application or any other suitable online resource (e.g., an application associated with a merchant of merchant subsystem 200).”; pgh 48, “…a specific example of host electronic device 100 may be a handheld electronic device, such as an iPhone…”; pgh 55, “…a beacon may be a quick response (“QR”) code or any other suitable code that may be presented by client device 100’ and read by a scanner of one or more host devices…”)
Regarding claim(s) 3, 12, and 20:
The combination of Dicker/Gisolfi, as shown in the rejection above, discloses the limitations of claims 1, 10, and 18. Dicker further teaches:
wherein establishing the encrypted communication channel with the first server is responsive to interacting with a push notification, the push notification including information for establishing the encrypted communication channel with the first server. (Dicker: pgh 79, “For example, as shown in FIG. 3D, a push notification screen 190d may be provided by a GUI of host device 100 that may be operative to indicate to a user of host device 100 that a client payment request has been received with an identifier…GUI of host device 100 may proceed to a screen 190e of FIG. 3E that may enable a user of host device 100 to respond to the client payment request in one or more suitable ways.”)
Regarding claim(s) 4 and 13:
The combination of Dicker/Gisolfi, as shown in the rejection above, discloses the limitations of claims 1 and 10. Dicker further teaches:
wherein the user interface includes at least some of the transaction information. (Dicker: pgh 48, “…device 100 may launch or otherwise access a specific third-party merchant application and may display screens of a specific user interface that may include one or more tools or features for interacting with device 100 in a specific manner…”; pgh 52, “…store 420 may be configured to manage and provide an application 113 to device 100…where application 113 may be any suitable application, such as…a card management application…”)
Regarding claim(s) 5 and 14:
The combination of Dicker/Gisolfi, as shown in the rejection above, discloses the limitations of claims 4 and 13, respectively. Dicker further teaches:
wherein the processor is further configured to present a confirmation on the user interface, the confirmation being based on the result. (Dicker: pgh 64, “Next, after such a transaction has been executed…process 500 may include merchant subsystem 200 confirming the status of the transaction…to client device…”; pgh 73, “Communications component may pass this potential transaction data on to processor (e.g., for displaying on screen as part of a user interface on client device…”))
Regarding claim(s) 6 and 15:
The combination of Dicker/Gisolfi, as shown in the rejection above, discloses the limitations of claims 4 and 13, respectively. Dicker further teaches:
wherein the processor is further configured to transmit, to the first server, a modification of the transaction, wherein the modification was received via the user interface. (Dicker: pgh 82, “…in response to the host device’s update of the shipping address information or of any other suitable portion of the payment request data that may need to be processed by client device 100’ and/or merchant subsystem 200 before process 600 may enable funding of the transaction, host device 100 may be operative to generate and send host response data 668 indicative of that updated shipping information to client device 100…”; pgh 73, “Communications component may pass this potential transaction data on to processor (e.g., for displaying on screen as part of a user interface on client device…”))
Regarding claim(s) 7 and 16:
The combination of Dicker/Gisolfi, as shown in the rejection above, discloses the limitations of claims 1 and 10, respectively. Dicker further teaches:
wherein providing the payment credential is in response to receiving a user input authorizing the transaction. (Dicker: pgh 90, “Once merchant credential data 681 including secured host payment credential data 675/676 is received by merchant subsystem 200…process 600 may include step 638…where data 688 may include payment information and an authorization request…”)
Regarding claim(s) 8 and 17:
The combination of Dicker/Gisolfi, as shown in the rejection above, discloses the limitations of claims 1 and 10, respectively. Dicker further teaches:
further comprising receiving, by the first user device and from the first server, a confirmation comprising a success message, session-specific parameters, or cryptographic keys for the encrypted communication channel. (Dicker: pgh 64, “Then, client device 100’ may be operative to share such confirmed transaction status with hose device 100 at step 524…”; pgh 68, “Host credential data 654 via path 75 and/or via path 65 may be provisioned on secure element 145 of host device 100 as at least a portion or all of credential SSD 154a and may include credential applet 153a with credential information 161a and/or credential key 155a’ and/or key 155ak.”)
Regarding claim(s) 9:
The combination of Dicker/Gisolfi, as shown in the rejection above, discloses the limitations of claim 1. Dicker further teaches:
wherein the payment credential is encrypted. (Dicker: pgh 84, “…secure element of host device…may generate and encrypt certain credential data of that selected credential for use by commercial entity subsystem.”)
Conclusion
Pertinent Art
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. Vaid (US 2023/0098097) discloses methods to share a credential for accessing a secured entity between an origination device and a recipient device.
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/JOHN O PRESTON/Examiner, Art Unit 3693
June 22, 2026
/ELIZABETH H ROSEN/Primary Examiner, Art Unit 3693
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