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 preliminary amendment filed on October 17, 2024.
• Claims 3-6, 8-13, and 15 have been amended and are hereby entered.
• Claim 14 has been canceled.
• Claims 1-13 and 15 are currently pending and have been examined.
• This action is made Non-FINAL.
• The Examiner would like to note that this application is now being handled by Examiner Raven Yono.
Information Disclosure Statement
The information disclosure Statement(s) filed on 10/17/2024 have been considered. Initialed copies of the Form 1449 are enclosed herewith.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
Reference character FIG. 2 of 200.
Reference character 225B of FIG. 2.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-13 and 15 are rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more. Independent claims 1, 13, and 15 are directed to a method (claim 1), a system (claim 13), and an apparatus (claim 15). Therefore, on its face, each independent claim 1, 13, and 15 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, 13, and 15 recite, in part, a method, a system, and an apparatus of organizing human activity. Using the limitations in claim 1 to illustrate, the claim recites a multiple payment tokenized digital transaction authentication method comprising: receiving a first transaction request including a payment token, first payment information, a first cryptogram and a next transaction notification identifying a future second transaction; authenticating the first transaction request based at least in part on the first cryptogram; providing an authorization response approval message to authorize the first transaction request; and providing a next transaction cryptogram suitable for use in authenticating a second transaction request. 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 receiving a transaction request, authenticating a transaction request based on a cryptogram, and providing a cryptogram for another transaction request, which is a fundamental economic principle or practice of mitigating risk and a commercial and legal interaction including sales activities or behaviors. 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 data processing system comprising a processor configured to perform a method comprising claim functions; and a computer-readable storage medium comprising instructions which, when executed by a computer, cause the computer to perform claim functions are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of receiving a transaction request, authenticating a transaction based on the cryptogram, and provide a cryptogram for a next transaction) such that they amount to no more than mere instructions to apply the exception using a generic computer components (see MPEP 2106.05(f)).
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 mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception 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 2-12 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 1-13 and 15 are ineligible.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
The United States Patent and Trademark Office (USPTO) is obliged to give claims their broadest reasonable interpretation consistent with the specification during proceedings before the USPTO. See In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) (during patent examination the pending claims must be interpreted as broadly as their terms reasonably allow). The broadest reasonable interpretation of a claim drawn to a computer readable storage medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. See MPEP 2111.01. When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter) and Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. §101, Aug. 24, 2009; p. 2.
The USPTO recognizes that applicants may have claims directed to computer readable media that cover signals per se, which the USPTO must reject under 35 U.S.C. § 101 as covering both non-statutory subject matter and statutory subject matter. In an effort to assist the patent community in overcoming a rejection or potential rejection under 35 U.S.C. § 101 in this situation, the USPTO suggests the following approach. A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation “non-transitory” to the claim, see MPEP 2106 (I). Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure. See, e.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998).
Appropriate correction is required.
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 (i.e., changing from AIA to pre-AIA ) 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 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, 4-7, 13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over US 20210084029 A1 (“Kallugudde”) in view of US 20220044212 A1 (“Kaitha”).
Regarding claim 1, Kallugudde discloses a multiple payment tokenized digital transaction authentication method comprising (see at least FIG. 7.):
receiving a first transaction request including a payment token, first payment information, a first cryptogram and a next transaction notification (Merchant server transmits a transaction authorisation request message to payment network, the transaction authorisation request message including the token generated, an expiry date of the token and the cryptogram. See at least [0087]. Token may be tokenized payment card details, see at least [0084]. The transaction authorisation request message may include a flag indicating that the transaction is part of a recurring or incremental payment. See at least [0097].);
authenticating the first transaction request based at least in part on the first cryptogram (Receiving transaction authorisation request message and validating including validating the cryptogram, see at least [0087]-[0091].);
providing an authorization response approval message to authorize the first transaction request (Receiving an authorization response message indicating whether transaction is approved or declined, and forwarding the message to the merchant server, see at least [0090]-[0091].); and
providing a next transaction cryptogram suitable for use in authenticating a second transaction request (payment network generates a second cryptogram. See at least [0095]. A cryptogram can be used for authenticating a transaction, see at least [0096]-[0102].).
While Kallugudde discloses a next transaction notification, Kallugudde does not expressly disclose a next transaction notification identifying a future second transaction.
However, Kaitha discloses a next transaction notification identifying a future second transaction (Payment request including an identifier that the issuer server uses to identify that the incoming transaction request is a recurring transaction request. See at least [0052].).
From the teaching of Kaitha, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the notification of Kallugudde to identify a future second transaction, as taught by Kaitha, in order to improve efficiency of processing transaction and in order to improve security (see Kaitha at least at [0002]-[0005]).
Regarding claim 4, the combination of Kallugudde and Kaitha discloses the limitations of claim 1, as discussed above, and Kallugudde further discloses the first transaction request relates to a consumer-initiated transaction (Step 1: Customer associates their payment card with an account administered by a merchant. Card details are provided to merchant server by customer electronic device as part of this process. See at least [0083].), and
the second transaction relates to a merchant-initiated transaction (Step 14: Merchant server transmits a transaction authorisation request message to payment network, the transaction authorisation request message including the token generated, an expiry date of the token, the second cryptogram received and a flag indicating that the transaction is part of a recurring or incremental payment. See at least [0097].).
Regarding claim 5, the combination of Kallugudde and Kaitha discloses the limitations of claim 1, as discussed above, and Kallugudde further discloses the first transaction request includes a third transaction notification (The transaction authorisation request message may include a flag indicating that the transaction is part of a recurring or incremental payment. See at least [0097]. The Examiner interprets the transaction notification which notifies of recurring payment as a third transaction notification.), and
the method further comprises providing a third cryptogram suitable for use in authenticating a third transaction request (the method can be repeated for subsequent authentication attempts, see at least [0050]. payment network generates a second cryptogram. See at least [0095]. A cryptogram can be used for authenticating a transaction, see at least [0096]-[0102].).
While Kallugudde discloses a transaction notification, Kallugudde does not expressly disclose a transaction notification identifying a future third transaction.
However, Kaitha discloses a transaction notification identifying a future third transaction (Payment request including an identifier that the issuer server uses to identify that the incoming transaction request is a recurring transaction request. See at least [0052].).
From the teaching of Kaitha, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the notification of Kallugudde to identify a future third transaction, as taught by Kaitha, in order to improve efficiency of processing transaction and in order to improve security (see Kaitha at least at [0002]-[0005]).
Regarding claim 6, the combination of Kallugudde and Kaitha discloses the limitations of claim 1, as discussed above, and Kallugudde further discloses receiving a second transaction request including the payment token, second payment information and the next transaction cryptogram (the method can be repeated for subsequent authentication attempts, see at least [0050]. Merchant server transmits a transaction authorisation request message to payment network, the transaction authorisation request message including the token generated, an expiry date of the token and the cryptogram. See at least [0087]. Token may be tokenized payment card details, see at least [0084]. The transaction authorisation request message may include a flag indicating that the transaction is part of a recurring or incremental payment. See at least [0097].);
authenticating the second transaction request based at least in part on the next transaction cryptogram (Receiving transaction authorisation request message and validating including validating the cryptogram, see at least [0087]-[0091].); and
providing a second authorization response approval message to authorize the second transaction request (Receiving an authorization response message indicating whether transaction is approved or declined, and forwarding the message to the merchant server, see at least [0090]-[0091].).
Regarding claim 7, the combination of Kallugudde and Kaitha discloses the limitations of claim 6, as discussed above, and Kallugudde further discloses the second transaction request includes a third transaction notification (the method can be repeated for subsequent authentication attempts, see at least [0050]. The transaction authorisation request message may include a flag indicating that the transaction is part of a recurring or incremental payment. See at least [0097].), and
the method further comprises providing a third cryptogram suitable for use in authenticating a third transaction request (payment network generates a second cryptogram. See at least [0095]. A cryptogram can be used for authenticating a transaction, see at least [0096]-[0102].).
While Kallugudde discloses a third transaction notification, Kallugudde does not expressly disclose a third transaction notification identifying a future second transaction.
However, Kaitha discloses a third transaction notification identifying a future third transaction (Payment request including an identifier that the issuer server uses to identify that the incoming transaction request is a recurring transaction request. See at least [0052].).
From the teaching of Kaitha, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the notification of Kallugudde to identify a future third transaction, as taught by Kaitha, in order to improve efficiency of processing transaction and in order to improve security (see Kaitha at least at [0002]-[0005]).
Claim 13 has similar limitations found in claim 1 above, and therefore is rejected by the same art and rationale. And Kallugudde discloses a data processing system comprising a processor configured to perform a method comprising claim functions (See at least [0107]-[0113]).
Claim 15 has similar limitations found in claim 1 above, and therefore is rejected by the same art and rationale. And Kallugudde discloses a computer-readable storage medium comprising instructions which, when executed by a computer, cause the computer to perform claim functions (See at least [0107]-[0113]).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kallugudde in view of Kaitha, and in further view of US 20150032626 A1 (“Dill”).
Regarding claim 2, the combination of Kallugudde and Kaitha discloses the limitations of claim 1, as discussed above. And while Kallugudde discloses a first cryptogram (see Kallugudde at least at [0087]), Kallugudde does not expressly disclose that the first cryptogram is a function of a token number of the payment token and the first payment information
However, Dill discloses the first cryptogram is a function of a token number of the payment token and the first payment information (a mobile payment application of a mobile device may use a shared algorithm that uses a time, a transaction counter, and/or other dynamic data as well as a portion of the token to generate a dynamic card verification value (dCVV) for each transaction. See at least [0210]. Token is a string of numbers, see at least [0069].).
From the teaching of Dill, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the first cryptogram to be a function of a token number and the first payment information, as taught by Dill, in order to improve security of transactions (see Dill at least at [0029], [0003]-[0009], and [0053]), in order to increase service transparency and reduce merchant and issuer costs (see Dill at least at [0029]), and in order to provide improved protections against misuse of payment accounts (see Dill at least at [0047]), and to improve issuers and consumers transaction approval levels (see Dill at least at [0048]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kallugudde in view of Kaitha, and in further view of US 20170186008 A1 (“Pachouri”).
Regarding claim 3, the combination of Kallugudde and Kaitha discloses the limitations of claim 1, as discussed above, and while Kallugudde discloses a next transaction cryptogram (see Kallugudde at least at [0095]), Kallugudde does not expressly disclose the authorization response approval message comprises the next transaction cryptogram.
However, Pachouri discloses the authorization response approval message comprises the next transaction cryptogram (A response message contains a secondary password which can be used in a subsequent transaction. See at least [0029]. Response message may be an authorization/approval of a transaction, see at least [0056].).
From the teaching of Pachouri, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the next transaction cryptogram of Kaitha to be including in an authorization response approval message, as taught by Pachouri, in order to improve security and convenience of transactions (see Pachouri at least at [0002]-[0003]).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kallugudde in view of Kaitha, and in further view of US 20090276347 A1 (“Kargman”).
Regarding claim 8, the combination of Kallugudde and Kaitha disclose the limitations of claim 1, as discussed above. Kallugudde does not expressly disclose the next transaction cryptogram includes a maximum second payment value to limit a value of the second transaction.
However, Kargman discloses the next transaction cryptogram includes a maximum second payment value to limit a value of the second transaction (The limits may be encoded into the temporary number or otherwise linked to the number. See at least Abstract and [0015]. See also [0036]. The user set limits may be a limit as to an amount of a single purchase or payment, a limit on cumulative purchases or payments, a time limit, such as an expiration time, a limit on times of the day, on days of the week or other time limits within which purchases are authorized, a limit as to the recipient that may receive the payment or on a type or location of recipient or business that may receive the payment or other criteria for the recipient of the payment. Other limits are also possible. See at least [0008].).
From the teaching of Kargman, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the next transaction cryptogram of Kallugudde to include a maximum second payment value, as taught by Kargman, in order to improve transaction security (see Kargman at least at [0037]).
Claims 9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kallugudde in view of Kaitha, and in further view of WO 2017127867 A1 (“Wilson”).
Regarding claim 9, the combination of Kallugudde and Kaitha disclose the limitations of claim 1, as discussed above. Kallugudde does not expressly disclose the next transaction cryptogram includes merchant information.
However, Wilson discloses the next transaction cryptogram includes merchant information (The cryptogram may also include the merchant POS/EFTPOS terminal identification number. See at least [0211].).
From the teaching of Wilson, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the next transaction cryptogram of Kallugudde to include merchant information, as taught by Wilson, in order to mitigate transaction fraud and improve security (see Wilson at least at [0026]-[0031])
Regarding claim 12, the combination of Kallugudde and Kaitha disclose the limitations of claim 1, as discussed above. Kallugudde does not expressly disclose the next transaction cryptogram is time limited.
However, Wilson discloses the next transaction cryptogram is time limited (the PINs may have a limited period of validity, for example, expiring one week after first use. See at least [0063].).
From the teaching of Wilson, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the next transaction cryptogram of Kallugudde to be time limited, as taught by Wilson, in order to mitigate transaction fraud and improve security (see Wilson at least at [0026]-[0031])
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kallugudde in view of Kaitha, and in further view of US 20160019536 A1 (“Ortiz”).
Regarding claim 10, the combination of Kallugudde and Kaitha disclose the limitations of claim 1, as discussed above. Kallugudde does not expressly disclose the next transaction cryptogram includes an incrementing transaction counter.
However, Ortiz discloses the next transaction cryptogram includes an incrementing transaction counter (Thus, for example, at least the customer's selected payment method and the total payment amount may be encoded into the secure cryptogram. As described in more detail below, for such entity(ies) that has/have capability to decode the cryptogram, the payment instructions encoded therein may be accessed and executed, e.g., by the financial institution debiting (or crediting) the customer's selected card or account by the purchase amount. Other transaction or identification information, such as customer, device, account, and/or other credentials, an application transaction counter, or a unique derivation key, may also optionally be encoded without limitation into the secure cryptogram. See at least [0163].).
From the teaching of Ortiz, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the next transaction cryptogram of Kallugudde to include an incrementing transaction counter, as taught by Ortiz, in order to improve flexibility in payment transactions and provide commercial advantages (see Ortiz at least at [0032]), and in order to improve security (see Ortiz at least at [0039]), and in order to improve efficiency of processing requests (see Ortiz at least at [0042]), and in order to reduce susceptibility to improper access and misuse of transaction data (see Ortiz at least at [0187]-[0192]), and in order to improve customer experience (see Ortiz at least at [0380]).
Regarding claim 11, the combination of Kallugudde and Kaitha disclose the limitations of claim 1, as discussed above. Kallugudde does not expressly disclose the first cryptogram includes consumer identification information and the next transaction cryptogram also includes the consumer identification information.
However, Ortiz discloses the first cryptogram includes consumer identification information and the next transaction cryptogram also includes the consumer identification information (Thus, for example, at least the customer's selected payment method and the total payment amount may be encoded into the secure cryptogram. As described in more detail below, for such entity(ies) that has/have capability to decode the cryptogram, the payment instructions encoded therein may be accessed and executed, e.g., by the financial institution debiting (or crediting) the customer's selected card or account by the purchase amount. Other transaction or identification information, such as customer, device, account, and/or other credentials, an application transaction counter, or a unique derivation key, may also optionally be encoded without limitation into the secure cryptogram. See at least [0163].).
From the teaching of Ortiz, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the first cryptogram and next transaction cryptogram to include consumer identification information, as taught by Ortiz, in order to improve flexibility in payment transactions and provide commercial advantages (see Ortiz at least at [0032]), and in order to improve security (see Ortiz at least at [0039]), and in order to improve efficiency of processing requests (see Ortiz at least at [0042]), and in order to reduce susceptibility to improper access and misuse of transaction data (see Ortiz at least at [0187]-[0192]), and in order to improve customer experience (see Ortiz at least at [0380]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20220391896 A1 (“Lei”) discloses a hosted point-of-sale service that provides the security features of card-present transactions for card-not-present transactions. The various embodiments of the present disclosure can be configured to receive a merchant identifier and a transaction amount for a transaction from a merchant terminal, as well as receive the merchant identifier and encrypted payment account data for the transaction. The encrypted payment account data can then be decrypted. An authorization request for the transaction is then generated based at least in part on the merchant identifier, the transaction amount, and the payment account data. The authorization request is then sent to a payment processor, which can route the authorization request to an authorizing entity via a payment network. An authorization response is received in response from the authorizing entity via the payment processor, and the contents are forwarded on to the merchant terminal.
US 20200097959 A1 (“Tran”) discloses receiving a request for payment credentials. The request indicates an account from which payment for a transaction is to be made. A payment token is looked-up that corresponds to the indicated account. Dynamic expiry data and a dynamic token verification code are generated. As a response to the request, the looked-up payment token, the generated dynamic expiry data and the generated dynamic token verification code are transmitted.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAVEN E YONO whose telephone number is (313)446-6606. The examiner can normally be reached Monday - Friday 8-5PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett M Sigmond can be reached at (303) 297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAVEN E YONO/Primary Examiner, Art Unit 3694