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 amendments filed on January 8, 2026.
• Claims 1, 8-9, and 16-17 have been amended and are hereby entered.
• Claims 4-7 and 12-15 have been canceled.
• Claims 1-3, 8-11, and 16-17 are currently pending and have been examined.
• This action is made FINAL.
Response to Arguments
Applicant’s arguments filed January 8, 2026 have been fully considered but they are not persuasive.
The Examiner is withdrawing the drawing objections due to Applicant’s amendments.
The Examiner is withdrawing the 35 USC § 112 rejections due to Applicant’s amendments.
New 35 USC § 112 rejections have been entered due to applicant’s amendments.
The Examiner is withdrawing the 35 USC § 103 rejections due to Applicant’s amendments.
Applicant’s arguments with respect to 35 USC § 101 have been fully considered and are not persuasive.
Regarding Applicant’s argument on pages 10-11, that the claims are not directed to an abstract idea, the Examiner respectfully disagrees. As indicated in the 35 USC § 101 rejection below, the claimed inventions allows for identifying whether an alternate identifier exists for a payment card and if there is no already existing alternative identifier, transmitting a new identifier and a cryptogram for use in a transaction. The Specification at [0002]-[0005] describe the creation of a token in a tokenization process and guest checkouts that allow customers to conduct transactions without creating a store account, and the Specification at [0004] states that there is a need to provide a solution for securely carrying out the transaction lifecycle without customer consent. The Specification and claims focus on an improvement to the process of for securely carrying out the transaction lifecycle, which is a fundamental economic principle or practice of mitigating risk and a commercial and legal interaction including sales activities or behaviors which falls within the category of Certain Methods of Organizing Human Activity and therefore is an abstract idea.
Regarding Applicant’s arguments on pages 11-17, that the claims integrate a practical application, the Examiner respectfully disagrees. Under the Patent Subject Matter Eligibility analysis, 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 generally link the use of the judicial exception into a particular technological environment or field of use-see MPEP 2106.05(h). Here the claims recite a computer-implemented method; a non-transitory computer readable medium including instructions stored thereon that when processed by at least one processor cause a system to perform operations; a first server; a memory of the first server; a second server; an issuer system such that they amount to no more than generally linking the use of the judicial exception to a particular technological environment or field of use (e.g., a computer network) (see MPEP 2106.05(h)).
Furthermore, and in response to Applicant’s arguments on pages 12-16, where Applicant argues technical problems that are addressed by the claim solution, in determining whether a claim integrates a judicial exception into a practical application, a determination is made of whether the claimed invention pertains to an improvement in the functioning of the computer itself or any other technology or technical field (i.e., a technological solution to a technological problem). Here, the claims recite generic computer components, i.e., a generic processor, a memory storing a computer program executable by the processor to perform the claimed method steps and system functions. The processor, memory and system are recited at a high level of generality and are recited as performing generic computer functions customarily used in computer applications.
Furthermore, the Specification describes a problem and improvement to a business or commercial process at least at [0004], stating that there is a need to provide a solution for securely carrying out the transaction lifecycle without customer consent
Regarding Applicant’s arguments on pages 17-18, that the claims recite an inventive concept that is significantly more than the abstract idea, the Examiner respectfully disagrees. The limitations are directed to an abstract idea and when determining if the claims are directed to significantly more, the additional limitations of the claims in addition to the abstract idea are analyzed. In the instant application, the additional elements of the claim include a computer-implemented method; a non-transitory computer readable medium including instructions stored thereon that when processed by at least one processor cause a system to perform operations; a first server; a memory of the first server; a second server; an issuer system. The additional limitations, when considered both individually and in combination, do not affect an improvement to another technology or technological field; the claims do not amount to an improvement to the functioning of the computer itself; and the claims do not move beyond a general link of use of an abstract idea to a particular technological environment. Therefore, the claims merely amount to merely generally linking the use of the abstract idea to a particular technological environment or field of use (e.g., a computer network), and is considered to amount to nothing more than requiring a generic computer network to carry out the abstract idea itself. The specifics about the abstract idea do not overcome the rejection.
Applicant’s reliance upon BASCOM, on page 18, is misplaced. The claims here are not like those the Court found patent eligible in Bascom, in which the inventive concept was the unconventional arrangement of the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user, this design permitted the filtering tool to have both the benefits of a filter on a local computer and the benefits of a filter on the [Internet Service Provider] server and was not conventional or generic, instead, the patent claimed and explained how a particular arrangement of elements was “a technical improvement over prior art ways of filtering such content.” (BASCOM, 827 F.3d at 1345.). In the instant application the claims do not have an inventive concept found in the non-conventional and non-generic arrangement of the additional elements.
Applicant argues, on page 18, that the claims do not preempt any abstract idea. In response to this argument, it is noted, “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). The instant application is reviewed within the framework of the Revised Guidance which specifies and particularizes the Mayo/Alice framework.
The claims are not patent eligible.
For the reasons above, Applicant’s arguments are not persuasive.
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 1-3, 8-11, and 16-17 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “a legitimate transaction.” A person having ordinary skill in the art would not be apprised as to the scope of what constitutes a “legitimate” transaction as opposed to what constitutes an illegitimate transaction. The Specification offers no guidance as to ascertain which transactions are “legitimate.” This limitation renders the claim indefinite and is therefore rejected under 112b. For examination purposes, the Examiner is interpreting “a legitimate transaction” as “a transaction.”
Claims 9 and 17 have similar limitations found in claim 1 above, and therefore are rejected by the same art and rationale.
The rest of the dependent claims are rejected due to their dependency to a rejected claim.
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 1-3, 8-11, and 16-17are rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more. Independent claims 1, 9, and 17 are directed to a method (claim 1), a system (claim 9), and an apparatus (claim 17). Therefore, on its face, each independent claim 1, 9, and 17 are directed to a statutory category of invention under Step 1 of the Patent Subject Matter Eligibility analysis (see MPEP 2106.03).
Under Step 2A, Prong One of the Patent Subject Matter Eligibility analysis (see MPEP 2106.04), claims 1, 9, and 17 recite, in part, a method, a system, and an apparatus of organizing human activity. Using claim 1 to illustrate, the claim recites a method for performing a transaction with a merchant, the method comprising: receiving card information of a user from the merchant for performing the transaction; determining whether an alternate identifier for the card information is stored; in response to determining that the alternate identifier is not stored, transmitting a request message, the request message comprising a request to provide a new alternative identifier; generating the new alternative identifier for the card information; transmitting a provisioning request message comprising the new alternative identifier to an issuer; upon receiving a second request message, transmitting a cryptogram value associated with the new alternative identifier, wherein the cryptogram value is linked directly to the transaction as an authentication code; transmitting the new alternative identifier and the cryptogram to the merchant, wherein the cryptogram is provided to the merchant in response to a legitimate transaction routed; and validating the transaction based on the new alternative identifier and the cryptogram value.
The limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers fundamental economic principles or practices and commercial and legal interactions (certain methods of organizing human activity), but for the recitation of generic computer components. The claims as a whole recite a method of organizing human activity. The claimed inventions allows for identifying whether an alternate identifier exists for a payment card and if there is no already existing alternative identifier, transmitting a new identifier and a cryptogram for use in a transaction, which is a fundamental economic principle or practice of mitigating risk and a commercial and legal interaction including sales activities or behaviors. The mere nominal recitation of a first server and a second server do not take the claim out of the methods of organizing human activity grouping. Thus, the claims recite an abstract idea.
Under Step 2A, Prong Two of the Patent Subject Matter Eligibility analysis (see MPEP 2106.04), the judicial exception is not integrated into a practical application. In particular, the additional elements of a computer-implemented method; a non-transitory computer readable medium including instructions stored thereon that when processed by at least one processor cause a system to perform operations; a first server; a memory of the first server; a second server; an issuer system are recited at a high-level of generality (i.e., as a generic computer components performing generic computer functions of identifying whether an alternate identifier exists and transmitting data) such that it amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use (e.g., a computer network).-see MPEP 2106.05(h).
Accordingly, the combination of the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea.
Under Step 2B of the Patent Subject Matter Eligibility analysis (see MPEP 2106.05), the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements in the claims amount to no more than generally linking the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). Generally linking the use of the judicial exception to a particular technological environment or field of use using generic computer components cannot provide an inventive concept.
The claims are not patent eligible.
The dependent claims have been given the full two part analysis including analyzing the additional limitations both individually and in combination. The dependent claim(s) when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. 101 because for the same reasoning as above and the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea. Dependent claims 8 and 16 simply further describes the technological environment. Dependent claims 2-3, and 10-11 simply help to define the abstract idea. The additional limitations of the dependent claim(s) when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Viewing the claim limitations as an ordered combination does not add anything further than looking at the claim limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Accordingly, claims 1-3, 8-11, and 16-17 are ineligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 11080696 B2 (“Flurscheim”) discloses allow users to use their communication devices to perform transactions (e.g., payment transactions, access transactions, etc.). To complete a transaction, a resource provider electronically generates a code representing transaction data and displays it on an access device. The user scans the code with his or her communication device using a camera associated with the communication device, for example. The code is interpreted by an application on the communication device. The user may request and receive a token at the communication device corresponding to sensitive information selected to perform the transaction (e.g., a primary account number). The user may then provide the token and the transaction data via the communication device to a server computer, which may facilitate completion of the transaction between the user and the resource provider using the transaction data and the token.
US 20170091757 A1 (“Llyod”) discloses provisioning, allocating, and compartmentalizing generated tokens for transaction utilization. In this way, the invention allows a user to switch out payment vehicles, payment accounts, merchants, or authorized user for one or more tokens. Thus the provisioning and allocation system allows for manipulation and provisioning of tokens, such that a user device may control the one or more payment accounts, payment vehicles, authorized users, time/date of use, and the like for each token accumulated by a user.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/RAVEN E YONO/Primary Examiner, Art Unit 3694