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
Claims 1-6 and 9-22 are pending in this instant application per remarks and claim amendments filed on 03/16/2026, wherein Claims 7-8 have been cancelled, original Claims 1-20 are shown as “Previously Presented”, and new Claims 21-22 have been added with both depending from Claim 9. Claims 1, 9 and 20 are independent claims reciting method, method and method claims. Claims 2-6, 10-19/21-22 and none are respective dependent claims.
This Office Action is a final rejection in response to the claim amendments and the remarks filed by the Applicant on 16 MARCH 2026 for its original application of 30 AUGUST 2024 that is titled: “Method for Verification of Hardware-based and Software-based Payment Terminal Authenticity during Cardholder Verification”.
Accordingly, amended Claims 1-6 and 9-22 are now being rejected herein.
Claim Rejections - 35 USC §112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION — The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 21-22 that are newly added are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the Applicant regards as the invention. Examiner notes the following rejections ---
Newly added dependent Claim 21, line 2 recites a limitation “a payment terminal” that is unclear and/or indefinite. There is sufficient antecedent basis for this limitation in independent Claim 9, line 1 from which Claim 21 depends. Examiner suggests changing said limitation to “the payment terminal”, or a similar modification of the Applicant’s own choice.
Newly added dependent Claim 22, line 2 recites a limitation “a transaction value” that is unclear and/or indefinite. There is sufficient antecedent basis for this limitation in Claim 19, line 3, with both claims depending from independent Claim 9. Examiner suggests changing said limitation to “the transaction value”, or a similar modification of the Applicant’s own choice.
Appropriate correction 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 1-6 and 9-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more, wherein Claims 1, 7 and 13 are independent payment method, system and non-transitory computer readable medium claims respectively.
(NOTE: Latest ‘amendments to the claims’ filed by the Applicant on 03/16/2026 are shown as underlined additions, and all deletions may not be shown.)
Exemplary Analysis.
Claim 1: Ineligible.
The claim recites a series of steps. The claim is directed to a method reciting a series of steps, which is a statutory category of invention (Step 1 -- YES).
The claim is analyzed to determine whether it is directed to a judicial exception. The computer-implemented method claim recites the limitations of: storing a cardholder-recognizable token, wherein the cardholder-recognizable token is mapped to a cardholder account; receiving a payment authorization request, wherein the payment authorization request comprises: payment information, and transaction information; matching the payment information to the cardholder account; determining that a verification of a personal identification number (PIN) associated with the cardholder account is required based on the transaction information; and transmitting a response to the payment authorization request, wherein the response comprises: the cardholder-recognizable token; and a request for the verification of the PIN. In other words, the claim includes presenting the cardholder-recognizable token to the cardholder with the verification request of the PIN (per Abstract). These limitations, as drafted, are steps of a method that, under its broadest reasonable interpretation, covers performance of the limitations via a method of organizing human activity such as fundamental economic principles or practices (including hedging, insurance, mitigating risk), and/or commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations), and/or managing behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions), but for the recitation of generic computer/s and/or computer component/s such as the devices/ mobile devices. These limitations fall under the “certain methods of organizing human activity” group (Step 2A1 -- YES).
Next, the claim is analyzed to determine if it is integrated into a practical application. The claim recites additional elements of: a payment terminal; and an issuer server. These additional elements are considered extra-solution activities. The terminal and server devices in the steps are recited at a high level of generality, i.e., as generic processors performing generic computer/s functions of processing data. These generic processors are no more than mere instructions to apply the exception using generic computer/s and/or computer component/s. Accordingly, these additional elements do not integrate the abstract idea into a practical application, because they do not impose any meaningful limits on practicing the abstract idea. Thus, the claim is directed to the abstract idea (Step 2A2 -- NO).
Next, the claim is analyzed to determine if there are additional elements in this claim that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed with respect to Step 2A2 above, the additional elements in the claim amount to no more than mere instructions to apply the exception using generic computer/s and/or computer component/s. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer and/or computer components over a network cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Because the additional elements of: a payment terminal; and an issuer server, were considered to be extra-solution activities in Step 2A, they are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine and conventional in the field. The disclosure does not provide any indication that these devices (processors) are anything other than generic processors and the Symantec, TLI, and OIP Techs. court decisions (MPEP 2106.05 (d) (II)) indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Also, paras [0024]-[0028] of the Applicant’s own Specification describe ---
{“[0024] Referring to FIGS. 1 and 2, a method 100 for authenticating a transaction terminal 201 during a payment transaction, for example, and an authentication system 200 to implement the method 100 are illustrated. In some aspects, the system 200 may implement the authentication method 100 during cardholder 101 verification and/or for high value transactions, e.g., transactions greater than or equal to a predetermined threshold. The terminal 201 can be a POS terminal or an Automated Teller Machine (ATM), for example, through which a financial transaction, e.g., a payment transaction, can be performed. ………………………………………………………………………..
[0025] To protect against fraudulent payment terminals, the system 200, implementing the method 100, utilizes a unique customer-recognizable token 300 (FIG. 3) to assure the cardholder 101 of the authenticity of a payment terminal 201. Failure to present the token 300 alerts the cardholder 101 to fraudulent activities. In some aspects, the cardholder 101 preselects the token 300 to be associated with a payment card and/or to be associated with the cardholder 101. The token 300 may be chosen by the cardholder 101 in a payment card personalization procedure, for example. …………..
[0026] The system 200 includes an issuer server 202 that facilitates token selection by a cardholder 101 during an initial onboarding, for example. The issuer server 202 may present the token 300 to the cardholder 101, or allow the cardholder 101 to select the token 300 from a plurality of available tokens, for example. In some aspects, the cardholder 101 is permitted to create their own token that is then transmitted to the issuer server 202. An issuer interface such as, for example, an issuer application 205 can be utilized to obtain/identify/select the token 300. The issuer server 202 then stores the token 300, or any suitable indication of the cardholder selection, in a database 207, for example. In some instances, the database 207 may be configured to store information related to the cardholder 101, and unique tokens 300 associated with and/or selected by the cardholder 101. …………………………………………………………..
[0027] In some aspects, the system 200 may further include a payment network 204 and an acquirer 206. The token 300 selection/identification can be facilitated by the payment network 204, for example, in a similar manner described with respect to the issuer server 202. …………………………………………………………………………..
[0028] Various components of the system 200 perform various interactions facilitated by a communication network 208, for example. As used herein, the term “communication” and “communicate” may refer to the reception, receipt, transmission, transfer, provision, and/or the like of information (e.g., data, signals, messages, instructions, calls, commands, and/or the like). A communication may use a direct or indirect connection and may be wired and/or wireless in nature. As an example, for one unit (e.g., a device, a system, a component of a device or system, combinations thereof, and/or the like) to communicate with another unit means that the one unit can directly or indirectly receive information from and/or transmit information to the other unit. The one unit may communicate with the other unit even though the information may be modified, processed, relayed, and/or routed between the one unit and the other unit. In one example, a first unit may communicate with a second unit even though the first unit receives information and does not communicate information to the second unit. For example, a first unit may be in communication with a second unit even though the first unit passively receives data and does not actively transmit data to the second unit. As another example, a first unit may communicate with a second unit if an intermediary unit (e.g., a third unit located between the first unit and the second unit) receives information from the first unit, processes the information received from the first unit to produce processed information, and communicates the processed information to the second unit. In some non-limiting embodiments, a message may refer to a packet (e.g., a data packet, a network packet, and/or the like) that includes data. It will be appreciated that numerous other arrangements are possible.”} ---
and indicate that the concept described by the extra-solution additional elements is conventional. Accordingly, a conclusion that the aforementioned extra-solution additional elements are well-understood, routine and conventional activity is supported under Berkheimer options 2 and 3, respectively.
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional elements do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea (Step 2B -- NO), and the claim is not patent eligible.
The analysis above applies to all statutory categories of the invention including independent method Claim 1 and independent method Claim 20, which perform the steps similar to those of the independent method Claim 9. Furthermore, the limitations of dependent method Claims 10-19, and newly added Claims 21-22, further narrow the independent method Claim 9 with additional steps and limitations (e.g., applying ‘updates’ --- status of surroundings; probability of position; a results ‘merger’; degree of divergence calculation/determiner; wherein the cardholder- recognizable token is configured to be displayed on a payment terminal to verify the authenticity the payment terminal; and ……… based on the transaction value being greater than the threshold, embedding the cardholder-recognizable token in the response; etc.), and do not resolve the issues raised in rejection of the independent method Claim 9. Similarly, dependent method Claims 2-8 also further narrow its independent Claim 1, which are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Therefore, said Claims 1-6 and 9-22 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant's claim amendments and remarks (on pages 6-9) dated 16 MARCH 2016 with respect to the rejection of amended Claims 1-6 and 9-22 have been carefully considered, but they are not persuasive and do not put these amended claims in a condition ready for Allowance. Thus, the rejection of amended Claims 1-6 and 9-22 has been maintained as described above. Additionally, Examiner notes that all the previous rejections under 35 USC §103 have been withdrawn based on claim amendments and remarks of 03/16/2016. Thus, the rejection of amended Claims 1-6 and 9-22, as described above, is being maintained herein with some modifications in this Office Action, where needed to provide clarifications by maintaining 101 rejection only.
In response to the Applicant’s arguments of 03/16/2026 against the rejection under 35 USC 101, Examiner respectfully disagrees. Also, Examiner clarifies that the instant application is nothing more than an improvement of an abstract idea, wherein using technology/ computers to execute an abstract idea is at most an improvement to the abstract idea.
In further response to the Applicant’s arguments of 03/16/2026 arguing that {“Claim 9 is not directed to an abstract idea. Claim 9 is not directed to a commercial arrangement, an economic practice, a contractual relationship, a sales activity, or any other form of human organizational activity.”}, Examiner respectfully disagrees. Examiner notes that exemplary method Claim 9 recites “a/the payment authorization request” that comprises “payment information” and “transaction information”, which are a form of fundamental economic principles or practices; and Claim 9 recites “matching, by the issuer server, the payment information to the cardholder account;” and “determining, by the issuer server, that a verification of a personal identification number (PIN) associated with the cardholder account is required based on the transaction information;”, which are a form of commercial or legal interactions; and Claim 9 recites “wherein the response comprises: the cardholder-recognizable token; and a request for the verification of the PIN”, which are a form of managing personal behavior or relationships or interactions between people; all of which fall under “certain methods of organizing human activity”. Thus, like the concept of intermediated settlement in Alice, and the concept of hedging in Bilski, the concept of “claim includes presenting the cardholder-recognizable token to the cardholder with the verification request of the PIN” recited in exemplary independent Claim 9 “is a fundamental economic practice long prevalent in our system of commerce.” Thus, it is clear that exemplary independent Claim 9 recites fundamental economic practices and/or commercial transactions and/or managing personal behavior or relationships or interactions between people that, under the Revised Guidance, fall under the category of abstract ideas related to “certain methods of organizing human activity.” 2019 Revised Guidance, 84 Fed. Reg. at 52. Accordingly, independent Claim 9 recites an abstract idea.
In further response to the Applicant’s arguments of 03/16/2026 arguing that “claim 9 is nonetheless patent-eligible under Step 2A Prong 2”, Examiner respectfully disagrees. Also, under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea --- see MPEP 2106.05(f).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office Action. Accordingly, THIS ACTION IS MADE FINAL. See at least 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.
The prior art made of record and not relied upon, listed in Form 892, that is considered pertinent to the Applicant's disclosure and review for not traversing already issued patents and/or claimed inventions by the claims of the current invention of the Applicant. Examiner notes that Form 892 contains more references than those cited in the rejection above under 35 USC 103, and that all the references cited on said Form 892 are relevant to this application and form a part of the body of prior art.
The Examiner has pointed out particular references contained in the prior art of record in the body of this action for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. The Applicant should consider the entire prior art as applicable as to the limitations of the claims.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Sanjeev Malhotra whose telephone number is (571) 272-7292. The Examiner can normally be reached during Monday-Friday between 8:30-17:00 hours on a Flexible schedule.
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Electronic Communications
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/S.M./
Examiner, Art Unit 3691
sanjeev.malhotra@uspto.gov
/ABHISHEK VYAS/Supervisory Patent Examiner, Art Unit 3691
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