DETAILED ACTION
Acknowledgements
This office action is in response to the claims filed 03/02/2026.
Claims 1, 8 and 15 are amended.
Claims 1-20 are pending.
Claims 1-20 have been examined.
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 .
Response to Arguments
Applicant's arguments filed 03/02/2026 have been fully considered but they are not persuasive.
101
Applicant argues “Amended claim 1 recites a specific improvement in the field of offline data synchronization… provides a specific set of rules that result in an improvement to the security and integrity of offline data transfers”. Examiner disagrees.
The claim limitation recites “each respective data exchange identifier associated with a respective data exchange performed by an application executed on the user device and stored in the background application during thein an offline processing session”, the claim does not actually recite any limitations that achieve Applicant’s claimed improvement. The entirety of the functions in the claims do not appear to be part of an “offline processing session”, much less an improvement achieved in relation to one. The claims are directed at an abstract idea, and the argued improvement is not achieved in the claims. The rejection is maintained.
112
Due to Applicant’s amendments, prior 112 rejections are withdrawn.
103
The combination of prior art Tadiparti and Ludin teach the recited claims.
Tadiparti discloses authenticating, by the first computing system, at least some of the validation data to verify that the number of data exchanges indicated in the validation data matches a number of data exchanges represented indicated by the application (¶ 53-70, 82, 83);
Tadiparti - A token application 222 may be configured to, in conjunction with a processor 226, generate a token to be used in a transaction. In some embodiments, the token application 222 may authenticate a user of the mobile device 204 before generating a token… To do this, the token application 222 may, in conjunction with the processor 226, obtain biometric information from the user (e.g., a fingerprint or voiceprint) via an input sensor installed on the mobile device 204 to be compared to biometric information stored in relation to the user…. In some embodiments, the token application computer may respond to the transaction details by providing a token to be used to complete the transaction…because the token used to conduct the transaction was obtained from a personal device operated by an authentic user, the retrieval of the token from an authentic user device is another authentication factor indicating that the transaction being conducted is authentic. (¶ 54, 64, 83)
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Subject Matter Eligibility Standard
When considering subject matter eligibility under 35 U.S.C. § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter (101 Analysis: Step 1). Even if the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) (101 Analysis: Step 2a(Prong 1), and if so, Identify whether there are any additional elements recited in the claim beyond the judicial exception(s), and evaluate those additional elements to determine whether they integrate the exception into a practical application of the exception. (101 Analysis: Step 2a (Prong 2). If additional elements does not integrate the exception into a practical application of the exception, claim still requires an evaluation of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception. If the claim as a whole amounts to significantly more than the exception itself (there is an inventive concept in the claim), the claim is eligible. If the claim as a whole does not amount to significantly more (there is no inventive concept in the claim), the claim is ineligible. (101 Analysis: Step 2b).
The 2019 PEG explains that the abstract idea exception includes the following groupings of subject matter: a) Mathematical concepts b) Certain methods of organizing human activity and c) Mental processes
Analysis
In the instant case, claim 1 is directed to a method, and claims 8 and 15 are directed to an article of manufacture.
Step 2a.1– Identifying an Abstract Idea
The claims recite the steps of “receiving… data… authenticating … data… generating… token… and transmitting…the token….” The recited limitations fall within the certain methods of organizing human activity grouping of abstract ideas, specifically, fundamental economic principles, for example, receiving transaction information, verifying the information, generating a representation of the information and transmitting it. Accordingly, the claims recites an abstract idea.
See MPEP 2106.
Step 2a.2 – Identifying a Practical Application
The claim does not currently recite any additional elements or combination of additional elements that integrate the judicial exception into a practical application.
Accordingly, even in combination, these elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Mere instructions to apply the exception using generic computer components and limitations to a particular field of use or technological environment do not amount to practical applications. The claim in directed to an abstract idea.
Step 2b
The claim limitations recite “receiving… data… authenticating… data… generating… token… and transmitting…the token….” are not additional elements and they amount to no more than mere instructions to apply the exception using a generic computer component. For the same reason these elements are not sufficient to provide an inventive concept. This is also determined to be well-understood, routine and conventional activity in the field. The Symantec, TLI, and OIP Techs, court decision cited in MPEP 2106.05(d)(II) indicates that mere receipt or transmission 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. Therefore, when considering the additional elements alone, and in combination, there is no inventive concept in the claim and thus the claim is not eligible.
Viewed as a whole, instructions/method claims recite the concept of a fundamental economic practice as performed by a generic computer. The claims do not currently recite any additional elements or combination of additional elements that amount to significantly more than the judicial exception. The elements used to perform the claimed judicial exception amount to no more than mere instructions to implement the abstract idea in a network, and/or merely uses a network as a tool to perform an abstract idea and/or generally linking the use of the judicial exception to a particular environment.
Claims 2-7, 9-14 and 16-20 provide descriptive language surrounding the abstract idea. As such, these elements do not provide the significantly more to the underlying abstract idea necessary to render the invention patentable.
The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Therefore, based on case law precedent, the claims are claiming subject matter similar to concepts already identified by the courts as dealing with abstract ideas. See Alice Corp. Pty. Ltd., 573 U.S. 208 (citing Bilski v. Kappos, 561, U.S. 593, 611 (2010)).
The claims at issue amount to nothing significantly more than an instruction to apply the abstract idea using some unspecified, generic computer. See Alice Corp. Pty. Ltd., 573 U.S. 208. Mere instructions to apply the exception using a generic computer component and limitations to a particular field of use or technological environment cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Conclusion
The claim as a whole, does not amount to significantly more than the abstract idea itself. This is because the claim does not affect an improvement to another technology or technical filed; the claim does not amount to an improvement to the functioning of a computer system itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, the Examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
Dependent claims do not resolve the deficiency of independent claims and accordingly stand rejected under 35 USC 101 based on the same rationale.
Dependent claims 2-7, 9-14 and 16-20 are also rejected.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 8, and 15 recite “receiving, by a first computing system and from a second computing system, validation data retrieved from a background application executed on a user device….” According to the disclosure( Abstract; ¶ 20-30), “The method may include transmitting, by the application executed on the user device, the validation data, and the sensitive data to a first computing system. The method may include receiving, by a second computing system, the validation data from the first computing system. The method may include generating, by the second computing system, the token, digitally signed by the second computing system. The method may include transmitting, by the second computing system, the token to the first computing system.” The disclosure states clearly, “transmitting, by the application executed on the user device, the validation data, and the sensitive data to a first computing system… The method may include receiving, by a second computing system, the validation data from the first computing system”. The disclosure does not provide for the “first computing system” receiving validation data, retrieved from a background application executed on a user device, from a “second computing system”, the disclosure has specific names for the different entities and specific tasks they perform. With the revision of the clear terms and functions detailed in the specification, the claims attempt to override the clear intention of the disclosure. The claims do not have written description support for recited modifications that deviate and confuse the teachings of the disclosure. The disclosure does not provide support for the claim language. Dependent claims 2-7, 9-14 and 16-20 are also rejected.
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 8-14 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.
Claim 8 recites “A system, comprising: a first computing system; a second computing system; a user device; one or more processors; and a computer-readable memory comprising instructions that, when executed by the one or more processors, cause the system to perform operations to: ….” The claims are unclear and indefinite. The system is recited to comprise multiple computing systems and a user device and the system, that contains multiple systems, also appears capable of executing instructions by a single processor of the “one or more processors” to perform the operations of the “first computing system”. The claim is unclear and indefinite. Dependent claims 9-14 are also rejected. Dependent claims 9-14 are also rejected.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tadiparti (US 20180330371) (“Tadiparti”), and further in view of Ludin et al. (WO 2025071896) (“Ludin”).
Regarding claims 1, 8 and 15, Tadiparti discloses receiving, by a first computing system and from a second computing system, validation, the validation data comprising respective data exchange identifiers, each respective data exchange identifier associated with a respective data exchange ( Figure 1; ¶ 17, 25, 49-79, 82-88, 90-95);
Tadiparti - because the token used to conduct the transaction was obtained from a personal device operated by an authentic user, the retrieval of the token from an authentic user device is another authentication factor indicating that the transaction being conducted is authentic…The phone number may be present in a data field normally reserved for a primary account number for a credit or debit card. In some cases, the phone number may be padded with characters to fill in the data field. The service provider computer 106 may then generate a message (e.g., a short messaging service (SMS) message) to be transmitted to the mobile device 110 associated with that phone number. The message may include a number of transaction details associated with the transaction to be completed. Once the message has been received at the mobile device 110,… The transaction information may include at least a mobile device identifier. Upon receiving the transaction information, the service provider computer may identify a user account associated with the mobile device identifier… (¶ 50, 54, 79)
authenticating, by the first computing system, at least some of the validation data to verify that the number of data exchanges indicated in the validation data matches a number of data exchanges represented indicated by the application (¶ 53-70, 82, 83);
Tadiparti - A token application 222 may be configured to, in conjunction with a processor 226, generate a token to be used in a transaction. In some embodiments, the token application 222 may authenticate a user of the mobile device 204 before generating a token… To do this, the token application 222 may, in conjunction with the processor 226, obtain biometric information from the user (e.g., a fingerprint or voiceprint) via an input sensor installed on the mobile device 204 to be compared to biometric information stored in relation to the user…. In some embodiments, the token application computer may respond to the transaction details by providing a token to be used to complete the transaction…because the token used to conduct the transaction was obtained from a personal device operated by an authentic user, the retrieval of the token from an authentic user device is another authentication factor indicating that the transaction being conducted is authentic. (¶ 54, 64, 83)
generating, by the first computing system, a token indicating that the validation data is authentic; and (¶ 49-70, 82, 83, 89-95);
Tadiparti - The token application may then generate a token, which may then be relayed to the service provider computer 106 by the mobile device 102. (¶ 50)
transmitting, by the first computing system, the token to the second computing system, the token further configured to be received by the application executed on the user device (¶ 50-70, 82-95);
Tadiparti - The token application may then generate a token, which may then be relayed to the service provider computer 106 by the mobile device 102. (¶ 50)
Tadiparti does not disclose validation data retrieved from a background application executed on a user device; and performed by an application executed on the user device stored in the background application during thein an offline processing session.
Ludin teaches validation data retrieved from a background application executed on a user device; and performed by an application executed on the user device stored in the background application during thein an offline processing session
(Figure 1; ¶ 35-47, 50-81);
Ludin - User device 1 10 may further include database 112 stored on a transitory and/or non-transitory memory of user device 110, which may store various applications and data and be utilized during execution of various modules of user device 110. Database 112 may include, for example, identifiers such as operating system registry entries, cookies associated with payment application 120 and/or the other applications, identifiers associated with hardware of user device 110,The payment account may be accessed and/or used through a browser application and/or dedicated payment application….Offline token management service 208 may create tokens and tokenize data with a token service provider (TSP), such as an issuance and tokenization platform 210… The offline token may also include presigned authorization that enables offline transaction processing. (¶ 41, 50, 58, 81)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Tadiparti and Ludin in order to provide tokens for user information protection during transaction (Ludin; ¶ 1-4).
Regarding claims 2, 9 and 16, Tadiparti discloses wherein the validation data further comprises at least one of an exchange count, a session identifier, or a device identifier associated with the user device (¶ 16, 25, 40, 43, 49-51, 59, 60, 79, 86-89, 99).
Regarding claims 3, 10 and 17, Ludin teaches wherein the offline processing session is initiated by a trigger (¶ 35-39, 51-81).
Regarding claims 4, 11 and 18, Ludin teaches wherein the token is configured to permit the application to end the offline processing session (¶ 25-27, 35-39, 51-81; claim 3-5, 19, 20).
Regarding claims 5, 12 and 19, Ludin teaches wherein the respective data exchange identifiers are further associated with a hash of at least a portion of user data in the respective data exchanges (¶ 13, 25, 37, 64, 72, 88).
Regarding claims 6, 13 and 20, Tadiparti discloses wherein the user data comprises transaction data (¶ 16, 25, 40, 43, 49-51, 59, 60, 79, 86-89, 99).
Regarding claims 7 and 14, Tadiparti discloses wherein the application executed on the user device stores data associated with each of the respective data exchanges (¶ 49-70, 82, 83, 89-95). Ludin teaches performed in the offline processing session in a background application (¶ 35-39, 51-81). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Tadiparti and Ludin in order to provide tokens for user information protection during transaction (Ludin; ¶ 1-4).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Chan et al. (US 20230334444) teaches offline transactions.
Liu (US 20020143710) teaches encrypting sensitive information.
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.
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/ILSE I IMMANUEL/Primary Examiner, Art Unit 3699
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