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 .
This communication is a Final Office Action in response to Applicant’s amendment filed March 30, 2026.
Claims 1, 3-6, 8-13, 15 and 21-26 have been examined in this application. All other claims are cancelled. Claims 21-26 are newly presented.
No new information disclosure statement (IDS) has been filed.
Response to Arguments
Applicant’s arguments, filed March 30, 2026, regarding claim rejections under 35 U.S.C. 101, pages 8-15, have been fully considered but are not persuasive.
Applicant argues under Step 2A, Prong I that the claims do not recite an abstract idea. Applicant argues “An examiner alleging that the claims are directed to an abstract idea should first establish that the identified limitations fall within at least one of three groupings of abstract ideas enumerated in the MPEP;” id. Applicant then argues that the techniques utilized to generate and use a token are “not abstract and not conventional. Accordingly, the claims do not recite ‘certain methods of organizing human activity.” Also, it is argued that the “claims as amended recite computer-rooted operations that cannot be reasonably performed in the human mind;” id., 9.
The Examiner respectfully disagrees. First, the determination of whether the claims are directed to an abstract idea or not does not come after determining which abstract category the abstract idea falls into. The proper analysis, per MPEP is to first establish that the claims do recite an abstract idea and only once a judicial exception is determined to be recited do we move to determining whether said abstract idea falls into any of the abstract idea groupings. Regardless of flow, the claims are directed to an abstract idea without significantly more and are deemed as to fall under certain methods of organizing human activity, including sales activities/behaviors, and business relations.
Under MPEP §2106, the claims are analyzed to determine whether they recite:
(1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).
If the claims recite a judicial exception, under section (1), and fail to integrate the abstract idea into a practical application, section (2), then the claims are further analyzed to determine whether they:
(3) add a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP §2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
The claims are deemed to be directed to a provisioning of data or information usable to settle a transaction without significantly more. Indeed such an abstract idea clearly falls under not just certain methods of organizing human activity, as argued, but a specific sub-grouping of the abstract idea grouping; commercial interactions including sales activities/behaviors, and business relations. The tokenization method claimed clearly highlights the sales activities/relations between the argues specific entities, which allows for a transaction to be processed using the token. As a result, a business relationship is clearly established between these entities to allow said transaction to be processed. Without the relationship between the entities, a business relation would not be possible and use of the token or settlement of the transaction using the token would not be possible. Generating data to represent user account plain data in motivation of obfuscating the plain user account data is a core sale activity.
Furthermore and contrary to Applicant’s arguments, the claims can be carried out by a plurality of human using their mind and pen-and-paper. A human mind can perform concepts such as observation, evaluation, judgement, and opinion. The claimed scope is directed to nothing more than humans interacting via pen-and-paper and verbally to request a token from one of the humans, obtain the token in a pending state (verbally or in writing provide said code that is the token), send the token and keep it in a pending state, receiving a request to activate the token after an authorization request message comprising the token is receiving by another one of the humans. This limitation is outside the scope of the claims, and under the broadest reasonable interpretation amounts to mere non-functional descriptive material because the main limitation is directed to the receiving of the request to activate the token. Anything other the request to activate the token is outside the scope of the claims, under BRI, and is not considered. Even if it was considered, arguably, it still amounts to a human receiving data and activating the token by simply verbally noting or in writing declaring the token to be active. Finally the token is activated by one of the humans. The last limitation is again not considered, under BRI, because the limitation fails to positively capture the processing network as sending the authorization response message and fails to capture the token requestor finalizing the transaction. Again, even if these elements were positively recited, they again amount to actions a human can carry out using their mind and pen-and-paper.
Under Step 2A, Prong II, Applicant argues that the system as a whole is an additional element and that the entities that make up the system are a broad generalized incorrect determination of the additional elements in the claims. Applicant argues the obtaining the token in a pending state as a pivotal technical element. Applicant also argues when the token is triggered, which is done by the processing network computer, and that such activation is novel and not abstract. Finally, Applicant argues the last limitation and states that is captures the “concrete result of the improved process;” id.,11.
Moving to Step 2A, Prong Two. Contrary to Applicant' s arguments, the Examiner finds no additional elements in the claims as a whole that would amount to a practical application. First, the limitations argued by the Applicant fail to include any additional elements and they are also not considered when applying the broadest reasonable interpretation of the claims. For instance, receiving data in a pending state, whether it’s a token or simply plain text data, is just that; receiving data. The use of the data received (token) in a pending state is not accompanied by additional elements to capture any improvement or technical solution to a technical problem on how it is in a pending state or how it is stored in a pending state or what differentiates it from a sheet of a paper comprising data being stored until it’s needed. Likewise, the rest of the argued limitations are surprisingly the exact limitations, which are not given any patentable weight under BRI because they are not positively recited and they are directed to entities outside the claimed scope. Under BRI, the claim limitation argued is not considered. Even if it is considered, it fails to provide technical elements that would be deemed additional elements that amount to a practical application. Receiving an approval of a use of a transaction including the token itself is just mere receipt of data to cause the token to be activated because it is being utilized in a transaction. There is nothing in the claim that captures a technical solution to a technical problem on how to activate an inactive token besides a high-level description directed to an entity outside the claimed scope that merely just receives data and as a result the token is activated. Likewise, the last limitation argued as being an additional element is not persuasive. First, the last limitation is not positively recited and again is directed to entities outside the scope. The additional elements are recited at a high level of generality, wherein the claims merely amount to an abstract idea that is implemented using generic computers, performing generic computer functions such as receiving data and sending data and analyzing data to determine an outcome. Each of the additional elements / limitations are no more than mere instructions to apply the exception using generic computer components or a generic device. Accordingly, even in combination, 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, arguably, add insignificant extra solution activity to the judicial exception and generally link the use of the exception to a particular technological environment / field of use.
Examiner also notes that MPEP 2106.04(I) states “The Supreme Court' s decisions make it clear that judicial exceptions need not be old or long-prevalent, and that even newly discovered or novel judicial exceptions are still exceptions. For example, the mathematical formula in Flook, the laws of nature in Mayo, and the isolated DNA in Myriad were all novel or newly discovered, but nonetheless were considered by the Supreme Court to be judicial exceptions because they were “‘basic tools of scientific and technological work' that lie beyond the domain of patent protection.” Myriad, 569 U.S. 576, 589, 106 USPQ2d at 1976, 1978 (noting that Myriad discovered the BRCA1 and BRCA1 genes and quoting Mayo, 566 U.S. 71, 101 USPQ2d at 1965); Flook, 437 U.S. at 591-92, 198 USPQ2d at 198 (“the novelty of the mathematical algorithm is not a determining factor at all”); Mayo, 566 U.S. 73-74, 78, 101 USPQ2d 1966, 1968 (noting that the claims embody the researcher's discoveries of laws of nature). The Supreme Court' s cited rationale for considering even “just discovered” judicial exceptions as exceptions stems from the concern that “without this exception, there would be considerable danger that the grant of patents would ‘tie up' the use of such tools and thereby ‘inhibit future innovation premised upon them.' ” Myriad, 569 U.S. at 589, 106 USPQ2d at 1978-79 (quoting Mayo, 566 U.S. at 86, 101 USPQ2d at 1971). See also Myriad, 569 U.S. at 591, 106 USPQ2d at 1979 (“Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry.”). The Federal Circuit has also applied this principle, for example, when holding a concept of using advertising as an exchange or currency to be an abstract idea, despite the patentee' s arguments that the concept was “new”. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15, 112 USPQ2d 1750, 1753-54 (Fed. Cir. 2014). Cf. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) (“a new abstract idea is still an abstract idea”) (emphasis in original).”
MPEP 2106.04(d)(III) recites that the “specification… must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner… the examiner should not determine the claim improves technology. Second, if the specification sets for an improvement in technology, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement described in the specification.” Emphasis added, MPEP 2106.04(d). The MPEP clearly outlines that the specification must include the improvements to the technology and that the claims must recite such improvement. Here the claims at least fail to capture any such improvements as argued as being recited in the Specification.
Emphasis added.
Finally, under Step-2B, Applicant argues that the claims meet the requirements to determine that the claims amount to significantly more than the abstract idea.
The Examiner respectfully disagrees. The claims 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 amount to merely instructions to apply the exception using generic computer components. The claim limitations do not improve another technology or technical field, improve the functioning of a computer itself, apply the abstract idea with, or by use of, a particular machine (not a generic computer, not adding the words "apply it" or words equivalent to "apply the abstract idea", not mere instructions to implement an abstract idea on a computer, adding insignificant extra solution activity to the judicial exception, generally linking the user of the judicial exception to a particular technological environment or field of use), effects a transformation or reduction of a particular article to a different state or thing, or adds meaningful limitations that amount to more than generally linking the use of the abstract idea to a particular technological environment. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
Applicant’s arguments, filed March 30, 2026, regarding claim rejections under 35 U.S.C. 102, have been fully considered. The claim amendments provide clear recitation of limitations carried out by two entities, the token service computer and the token vault computer. As depicted in at least Figure 1, these two entities do in fact manipulate data to advance a transaction. However, these two entities interact with other entities to manipulate data to advance a transaction. Therefore, the claimed scope does indeed provide, even with just two entities being claimed, a architecture that is different than what is disclosed in the prior art. Tokenization and use of such technology along with providing it in a pending state or an active state is clearly well settled in the art based at least on the teachings of the relied upon reference. Other references also provide well settled methods of tokenization to advance a transaction while resulting in many novel advancements. The instant Application differs solely on the architecture and how the data is manipulated to cause the transaction to be advanced. Thus, a obvious rejection is not deemed appropriate at this time in prosecution.
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 15 and 26 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.
Per claim 15, the claim is directed to a system comprising a token service computer and a token vault computer. However, the claims include limitations directed to a processing network and a token requestor computer and what these entities perform. Specifically, the claims capture the processing network as receiving an authorization request message comprising the token and an authorization entity’s approval and the last limitation which recites the processing network causes the transmission of an authorization response message and further the token requestor computer for finalizing the transaction. These entities are outside the scope of the claimed system directed ton only the token service computer and the token vault computer.
Any teaching of the claimed scope outside of the limitations directed to the processing network and the token requestor computer will be deemed as reading on the claims.
Dependent claim 26 is rejected under the same rational and for mere dependency on the 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, 3-6, 8-13, 15 and 21-26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1, 3-6, 8-13, 15 and 21-26 fall within at least one of the four categories of patent eligible subject matter (process, machine, manufacture, or composition of matter).
Claims 1, 3-6, 8-13, 15 and 21-26 are rejected under 35 U.S.C. 101 because the claimed invention, under the broadest reasonable interpretation, is directed to an abstract idea of provisioning data for use in a transaction without significantly more.
The abstract idea is categorized under certain methods of organizing human activity, including commercial interactions such as sales activities or behaviors, and business relations. The abstract idea is also characterized under mental processed, including concepts performed in the human mind such as observation, evaluation, judgement, opinion and performing these using pen and paper. The claims, under BRI, are merely directed to the provisioning of a token between entities, the token being usable to settle a transaction and storing the token for later use. Once the token is used, the entities communicate to activate the token and the token along with authorization to use the token before finalizing the transaction. The manipulation of data recited in the claims amounts to the user of the token to settle a transaction, which is clearly indicative of the above abstract idea grouping and sub-groupings.
Claim 1, in pertinent part, recites:
A method comprising:
receiving… [by a second entity from a first entity] a request to obtain a token;
providing… [by the second entity] a token request message to a… [third entity];
obtaining… [by the third entity] the token in a pending state;
transmitting, by the… [third entity] via the… [first entity], the token in the pending state to the… [second entity];
receiving, by the… [third entity] from a… [fourth entity], a request to activate the token after an authorization request message comprising the token and an authorizing entity's approval to activate the token is received by the… [fourth entity] in a transaction; and
activating, by the… [third entity] the token in response to receiving the request to activate the token,
thereby causing the… [fourth entity] to transmit an authorization response message with the token and an activation indicator to the… [second entity] for finalizing the transaction.
The judicial exception is not integrated into a practical application. The claims recite the following additional elements: a token service computer, a token requestor computer, a token vault computer, a processing network computer, a first processor, and a first computer readable medium comprising first code, second processor, second computer readable medium comprising second code. The additional elements are recited at a high level of generality, wherein the claims merely amount to an abstract idea that is implemented using generic computers, performing generic computer functions such as receiving data and sending data and analyzing data to determine an outcome. Each of the additional elements / limitations are no more than mere instructions to apply the exception using generic computer components or a generic device. Accordingly, even in combination, 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 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 amount to merely instructions to apply the exception using generic computer components. The claim limitations do not improve another technology or technical field, improve the functioning of a computer itself, apply the abstract idea with, or by use of, a particular machine (not a generic computer, not adding the words "apply it" or words equivalent to "apply the abstract idea", not mere instructions to implement an abstract idea on a computer, adding insignificant extra solution activity to the judicial exception, generally linking the user of the judicial exception to a particular technological environment or field of use), effects a transformation or reduction of a particular article to a different state or thing, or adds meaningful limitations that amount to more than generally linking the use of the abstract idea to a particular technological environment. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Per claim 10, the claim includes the additional elements of activating the token, generating the cryptogram, and transmitting the cryptogram. These additional elements are again recited at a high level of generality, amounting to merely a generation of data and transmission of said data, which amounts to generic high level computer functions. Accordingly, even in combination, 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 additional elements are merely applied to automate the abstract idea. The dependent claims fail to recite additional elements that would amount to a practical application or amount to significantly more than the judicial exception as discussed above.
The claims are not patent eligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is listed on for PTO-892.
U.S. Patent 11475445 to Mohammed teaches most of Applicant’s claimed scope. Incorporating Mohammed’s teachings with other cited references would amount to an obvious rejection under 35 U.S.C. 103. A person of ordinary skill in the art would obviously be able to move the generation of a token from a server to a user’s device or vice-a-versa. Likewise, the combination of multiple entities within a single entity is obvious the same was it is obvious to divide an entity into a plurality of entities each having a distinct function to carry out. In conclusion, tokenization and use of a cryptogram or other credentials to authenticate a user or their device when the user initiates a transaction is well settled in the art. The instant claims fail to produce novel elements over the prior art.
THIS ACTION IS MADE FINAL. 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 EL MEHDI OUSSIR whose telephone number is (571)270-0191. The examiner can normally be reached M-F 9AM - 5PM.
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Sincerely,
/EL MEHDI OUSSIR/Primary Examiner, Art Unit 3699
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