DETAILED ACTION
This office action is in response to Applicant’s communication of 7/22/2026. Amendments to claims 1, 6 and 15 have been entered. Claims 1-20 are pending and have been examined. The rejection and response to arguments are stated below.
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 .
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. The claims do fall within at least one of the four categories of patent eligible subject matter because claims 1, 6 and 15 are directed to a process; Step 1-yes.
Under Step 2A, prong 1, representative claim 1 recites a series of steps for determining if customer transaction authentication is complete, generating a bypass message to override a block instruction and forwarding an authorization request message to an issuer to approve the transaction based on authentication confirmation which is a fundamental economic practice, i.e. mitigating transaction risk, and commercial or legal interaction, i.e. sales activities, and thus grouped as “Certain Methods of Organizing Human Activity”. The claim as a whole and the limitations in combination recite this abstract idea. Specifically, the limitations of representative claim 1, in bold below, recite the abstract idea as follows.
(Currently Amended) A method comprising:
receiving, by a payment network computer and from a merchant computer, an authorization request message comprising customer authentication information, the customer authentication information having been received by the merchant computer from a user device during a transaction, wherein the customer authentication information includes a strong customer authentication (SCA) indicator having a numeric authentication value;
determining, by the payment network computer based on the customer authentication information, whether transaction authentication is complete, by comparing the numeric authentication value of the SCA indicator to an authentication security threshold maintained by the payment network computer;
generating, by the payment network computer, a transaction bypass message to override a block instruction, wherein the transaction bypass message includes at least a portion of the customer authentication information and directs the payment network computer to forward an authorization request message for the transaction to an issuer for approval, while the block remains in place until issuer approval; and
transmitting, by the payment network computer, the transaction bypass message to the issuer to prompt the issuer to approve the transaction based on the transaction authentication being confirmed as complete.
Independent claim 6 is analyzed in the same manner although the issuer can approve or decline the transaction.
Independent claim 15 is analyzed in the same manner with the final step being the abstract idea of “removing, by the payment network computer, the user-imposed block on the merchant based on the transaction bypass.”
The claimed limitations, identified above, recite a process that, under its broadest reasonable interpretation, covers performance of a fundamental economic practice and commercial or legal interaction, but for the recitation of generic computer components. That is, other than the mere nominal recitation of a payment network “computer”, a merchant “computer” and a user “device” in claim 1, a “computer-implemented” method, a “payment network computer”, a merchant “computer” and a user “device” in claim 6 and a “computer-implemented” method, a payment network “computer”, a merchant “computer” and a user “device”, there is nothing in the claim element which takes the steps out of the methods of organizing human activity abstract idea grouping. Thus, claim 1 as well as claims 6 and 15 recite an abstract idea.
Under step 2A, prong 2, this judicial exception is not integrated into a practical application. In particular, the claim only recites using generic, commercially available, off-the-shelf computing devices, i.e. processors suitably programmed communicating over a generic network, to perform the abstract idea steps. The computer components are recited at a high level of generality (i.e., as generic processors with memory suitably programmed communicating information over a generic network, see at least FIGs. 5, 6 and 7 and paragraphs [0060], any known payment network, [0067-0068], [0122], “The payment network 502, the issuer 504, the merchant 508, and the acquirer 510 include one or more than one computer apparatus 3000 described with reference to FIG. 6.”, [0132-0145] of the specification) such that it amounts no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea, see MPEP 2106.05(f). Accordingly, the additional elements claimed do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Claim 1, as well as claims 6 and 15, are directed to an abstract idea.
Under step 2B, the claim does 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 of using generic computer processors with memory suitably programmed communicating over a generic network to perform the limitation steps amounts no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea, see MPEP 2106.05(f). Mere instructions to apply an exception using generic computer components interacting in a conventional manner cannot provide an inventive concept. Claims 1, 6 and 15 are not patent eligible.
For instance, in the process of claim 1, the limitation steps, claimed at a high level of generality, recite steps that are considered mere instructions to apply an exception akin to a commonplace business method or mathematical algorithm being applied on a general purpose computer, Alice Corp. Pty. Ltd.; Gottschalk and Versata Dev. Group, Inc.; see MPEP 2106.05(f)(2).
Applicant has leveraged generic computing elements to perform the abstract idea of determining if customer transaction authentication is complete, generating a bypass message to override a block instruction and forwarding an authorization request message to an issuer to approve the transaction based on authentication confirmation without significantly more.
Dependent claims 2-5, 7-14 and 16-20 when analyzed as a whole and in an ordered combination are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea, as detailed below. The additional recited limitations in the dependent claims only refine the abstract idea.
For instance, claims 2 and 19 further refine the abstract idea by receiving a message from the issuer indicating successful authentication or approval or decline of the transaction. This can be completed in a myriad of ways and provides no technical details. Claim 3 further refines the abstract idea by updating information in the message based on a received response and approving the transaction for processing. This can be completed through manual means. Claims 4, 7, 8, 13, 14 and 20 all further refine the abstract idea by either removing or maintaining the transaction block based on the issuers approval or denial and a security threshold being met. These limitations are claimed at a very high level of generality and there are no technical implementation details such that these limitations cannot be completed through mental and manual means. Claims 5 and 10 further refine the abstract idea by notifying the merchant the status of the block instruction. These limitations are recited at a very high level of generality with no technical implementation details other than applying on generic computer elements. Claim 9 further refines the abstract idea by merely receiving an authentication indicator representing a successful authentication of the user. The additional element of the user device is a generic computing device, made clear in the specification, on which this abstract concept is applied with nothing significantly more. Claim 11 further refines the abstract idea through reciting that a security threshold is maintained at a very high level of generality. Claim 12 further refines the abstract idea by receiving a message from which the authenticator indicator is compared to the security threshold which can be completed through mental evaluation as well. Claim 16 recites generating a message containing the bypass and indicator at a very high level of generality further refining the abstract idea. Claim 17 merely defines the indicator as a strong customer authentication indicator. Examiner notes that a string customer authentication (SCA) indicator is a known security measure that requires two or more independent factors to verify a user’s identity, i.e. multi-factor authentication. As such, applicant has leveraged known security measures at a very high level of generality with nothing significantly more. Claim 18 further refines the abstract by transmitting a message to an issuer.
Clearly, the additional recited limitations in the dependent claim only refines the abstract idea further. Further refinement of an abstract idea does not convert an abstract idea into something concrete.
The claims merely amount to the application or instructions to apply the abstract idea (i.e. a series of steps for determining if customer transaction authentication is complete, generating a bypass message to override a block instruction and forwarding an authorization request message to an issuer to approve the transaction based on authentication confirmation) on one or more computers, and are considered to amount to nothing more than requiring a generic computer system (e.g. processors suitably programmed and communicating over a network) to merely carry out the abstract idea itself. As such, the claims, when considered as a whole, are nothing more than the instruction to implement the abstract idea (i.e. a series of steps for determining if customer transaction authentication is complete, generating a bypass message to override a block instruction and forwarding an authorization request message to an issuer to approve the transaction based on authentication confirmation) in a particular, albeit well-understood, routine and conventional technological environment.
Accordingly, the Examiner concludes that there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself or integrate the judicial exception into a practical application.
Response to Arguments
Applicant’s arguments, see the Remarks filed 7/22/2026, with respect to the 35 U.S.C. 112(b) rejection of claims 1-20 have been fully considered and are persuasive. The previous 35 U.S.C. 112(b) rejection of claims 1-20 has been withdrawn.
Applicant’s arguments with respect to the 35 U.S.C. 101 rejection of claims 1-20 filed in the Remarks dated 3/2/2026 have been fully considered but they are not persuasive.
On page 7 of the Remarks, Applicant argues, ‘“The amendment introduces a quantitative computational step including comparing a numeric SCA value to a maintained threshold at a payment network computer that has no mental or manual analog. This specific computational mechanism removes the claim from the abstract idea grouping because it is an operation that is inherently computer-implemented and not performable by human cognition or manual means.” Examiner respectfully disagrees.
The SCA value is a numeric value. Comparing a numeric value to a threshold value can most definitely be performed through mental evaluation and observation and manual means.
On page 8 of the Remarks, Applicant argues, “First, the amended claims satisfy MPEP § 2106.05(a) because they recite a specific improvement to the functioning of the payment network computer. As disclosed in the specification, conventional payment network systems lacked a mechanism to conditionally override a user-imposed block based on a quantitative assessment of authentication strength; instead, block instructions operated as binary, all-or-nothing controls that either prevented all transactions with a blocked merchant or required manual intervention to remove. The amended claims solve this technical deficiency by requiring the payment network computer to compare the numeric authentication value of the SCA indicator to an authentication security threshold maintained by the payment network computer, and to generate a transaction bypass message only when the numeric authentication value meets or exceeds that threshold. This threshold-gated bypass protocol enhances the payment network computer's block-management functionality by enabling automated, graduated authentication assessment, reducing false-positive block removals and ensuring that only transactions accompanied by sufficiently strong authentication can proceed to issuer review.” and on page 8 into 9, Applicant argues, “The foregoing also directly addresses the Examiner's attempt to distinguish DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), on the ground that the claimed invention is "a business solution to a problem rooted in an abstract idea." To the contrary, the problem solved by the amended claims is necessarily rooted in computer technology: it is the problem of how a payment network computer autonomously manages the state of block-instruction records in real time during transaction authorization processing, without manual intervention and based on a quantitative evaluation of authentication data. As disclosed in the specification, the threshold- comparison architecture operates on machine-generated numeric authentication values within the payment network computer's own data environment, which precludes any business judgment or human decision-making process. This is analogous to the claims held patent-eligible in Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1304 (Fed. Cir. 2018), where the Federal Circuit found that a specific method of modifying database behavior based on security analysis was not directed to an abstract idea but rather to a technological improvement in how a computer system processes security information. Here, the amended claims similarly recite a specific method by which the payment network computer modifies its block-instruction database based on a quantitative security analysis - the comparison of the numeric authentication value of the SCA indicator to the authentication security threshold to conditionally alter the state of a database record.” Examiner respectfully disagrees.
The “threshold-gated bypass protocol” is merely comparing a numeric value to an authentication security threshold with no technical implementation details such that this is anything more then automating a mental/manual process. The payment network “computer” is a most conventional and generic computing element that has been programmed to perform this limitation. Comparison of values to a threshold to determine stronger security or authentication did not arise from the advent of technology but has existed well before payment networks.
In Finjan, Inc. v. Blue Coat Systems, Inc. it was determined that Finjan pioneered “behavior based” scans that was in contrast to the traditional “code matching” systems. Specifically by ‘“behavior-based” scans can analyze a downloadable’s code and determine whether it performs potentially dangerous or unwanted operations—such as renaming or deleting files. Because security profiles communicate the granular information about potentially suspicious code made available by behavior-based scans, they can be used to protect against previously unknown viruses as well as “obfuscated code”—known viruses that have been cosmetically modified to avoid detection by code-matching virus scans. The security profile approach also enables more flexible and nuanced virus filtering.” Which is not analogous to the instant application. The instant application merely compares data to a threshold value in order to generate a transaction bypass message to override a block instruction and send said transaction bypass message to the issuer for approval. There are no technical implementation details such that any technical improvements are achieved. This is automating an abstract idea to improve the abstract idea.
On page 10 of the Remarks, Applicant argues ‘“This four-condition state machine constitutes precisely the type of "non-conventional and non-generic arrangement of known, conventional pieces" that the Federal Circuit held patent-eligible in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).” Applicant asserts that the specific ordered combination is non-conventional…..Even if individual components were known, Bascom holds that a non-conventional arrangement of known components can supply the inventive concept. Here, the block-state-machine architecture is not shown to be conventional.”’ and “Moreover, under Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), and the USPTO's April 19, 2018 Berkheimer Memorandum, a finding that additional elements are well-understood, routine, and conventional must be supported by factual evidence, such as citations to publications, patents, or a statement of official notice with an opportunity to rebut. The record contains no such evidentiary support. The Examiner has not identified any prior art reference, publication, or other factual basis demonstrating that the specific dual-condition, threshold-gated block-state modification protocol recited in the amended claims is conventional. Absent such evidence, the rejection under Step 2B cannot be sustained. Examiner respectfully disagrees.
The Examiner does not see the parallel between the claims of the instant case and those of Bascom. In Bascom, the claims describe a filtering system by providing customized filters at a remote server. Specifically, in Bascom an ISP server receives a request to access a website, associates the request with a particular user, and identifies the requested website. The filtering tool then applies the filtering mechanism associated with the particular user to the requested website to determine whether the user associated with that request is allowed access to the website. The filtering tool returns either the content of the website to the user, or a message to the user indicating that the request was denied. In Bascom another group of claims describe a hybrid filtering scheme implemented on the ISP server comprised of a master-inclusive list, an individual-customizable set of exclusive lists, and an individual-customizable set of inclusive lists. The focus of the claims in Bascom is on the specific asserted improvement in filtering technology by providing individually customizable filtering at the remote ISP server by taking advantage of the technical capability of certain communication networks. Specifically, the claimed invention in Bascom achieves other benefits over conventional filtering by providing Internet-content filtering in a manner that can be customized for a person attempting to access such content while avoiding the need for (potentially millions of) local servers or computers to perform such filtering and while being less susceptible to circumvention by the user, and structuring a filtering scheme not just to be effective, but also to make user-level customization administrable as users are added instead of becoming intractably complex. Hence, the Bascom claims are not directed to an abstract idea. On the other hand, Applicant’s claims do not involve any improvements to another technology, technical field, or improvements to the functioning of the computer itself. The invention in Bascom was a technological solution to a technological problem (using an improved filtering technology rather than using conventional filtering technology). Applicants’ invention is a business solution to a problem rooted in an abstract idea and applied on generic computers. The arrangement of the instant claims is an improvement to the business process of determining if customer transaction authentication is complete through comparison of data against a threshold to override a block message and generating a bypass message for forwarding an authorization request message to an issuer to approve the transaction based on authentication confirmation. It does not involve any improvements to another technology, technical field, or improvements to the functioning of the computer itself.
The steps of the claims, taken individually or as an ordered combination, have been identified as corresponding to an abstract idea. The additional elements in the claims are a “payment network”, a “merchant computer”, a user “device” and a “payment network computer”. It is clear, through a plain reading of Applicant’s specification, that the computing processors are suitably programmed to perform the abstract idea, see at least FIGs. 5, 6 and 7 and paragraphs [0060], any known payment network, [0067-0068], [0122], “The payment network 502, the issuer 504, the merchant 508, and the acquirer 510 include one or more than one computer apparatus 3000 described with reference to FIG. 6.”, [0132-0145] of the specification. The claims at issue do not require any nonconventional computer, network, or other components, or even a non-conventional and non-generic arrangement of known, conventional pieces but merely call for performance of the claimed functions on a set of generic computer components. The elements of the instant process, when taken alone, each execute in a manner conventionally expected of these elements. The elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone.
According to the USPTO guidelines of April 19, 2018 incorporating the Berkheimer memo (Berkheimer memo, hereinafter),
In a step 2B analysis, an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following:
1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
2. A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).
4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional elements). This option should be used only when the examiner is certain, based upon his or her personal knowledge, that the additional elements) represents well-understood, routine, conventional activity engaged in by those in the relevant art, in that the additional elements are widely prevalent or in common use in the relevant field, comparable to the types of activity or elements that are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. § 112(a).
The fact that a generic computing system such as described above can be suitably programmed, may be used to perform the claimed method and the claims at issue do not require any nonconventional computer, network, or other components, or even a “non-conventional and non-generic arrangement of known, conventional pieces” but instead merely call for performance of the claimed functions on a set of generic computer components, satisfies the Berkheimer memo requirement that the additional elements are conventional elements (as outlined in criterion 1 of the Berkheimer memo). The elements of the instant process, when taken alone, each execute in a manner conventionally expected of these elements. The elements of the instant process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. Hence these additional elements do not add anything significantly more than an abstract idea.
In light of the Alice decision and the guidance provided in the 2019 PEG, the features listed in the claims, are not considered an improvement to another technology or technical field, or an improvement to the functioning of the computer itself. At best these features may be considered to be a business solution, using computers, to a problem of determining if customer transaction authentication is complete, generating a bypass message to override a block instruction and forwarding an authorization request message to an issuer to approve the transaction based on authentication confirmation. The alleged benefits that Applicants argue are due to business decisions, using computers, rather than any improvement to another technology or technical field, or an improvement to the functioning of the computer itself. By relying on computing devices to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible (See Alice, 134 S. Ct. at 2359 “use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions” is not an inventive concept). As discussed in the rejection above, the components of the instant system, when taken alone, each execute in a manner conventionally expected of these components. At best, Applicant has claimed features that may improve an abstract idea. However, an improved abstract idea is still abstract, (SAP America v. Investpic *2-3 (‘“We may assume that the techniques claimed are “groundbreaking, innovative, or even brilliant,” but that is not enough for eligibility. Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); accord buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014). Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 89-90 (2012); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”)
There is a fundamental difference between computer functionality improvements, on the one hand, and uses of existing computers as tools to perform a particular task, on the other. There is nothing, for example, in the pending claims to suggest that the claimed processor(s) or memories are somehow made more efficient or that the manner in which these elements carry out their basic functions is otherwise improved in any way. The alleged advantages that Applicants argue do not concern an improvement in computer capabilities but instead relate to an alleged improvement in determining if customer transaction authentication is complete, generating a bypass message to override a block instruction and forwarding an authorization request message to an issuer to approve the transaction based on authentication confirmation, for which a computer is used as a tool in its ordinary capacity.
In summary, the computer is merely a platform on which the abstract idea is implemented. Simply executing an abstract concept on a computer does not render a computer “specialized,” nor does it transform a patent-ineligible claim into a patent-eligible one. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1280 (Fed. Cir. 2012). There are no improvements to another technology or technical field, no improvements to the functioning of the computer itself, transformation or reduction of a particular article to a different state or thing or any other meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment as a result of performing the claimed method. The claimed sequence of steps comprises only “conventional steps, specified at a high level of generality,” which is insufficient to supply an “inventive concept.” Id. at 2357 (quoting Mayo, 132 S. Ct. at 1294, 1297, 1300). Also, the addition of merely novel or non-routine components to the claimed idea does not necessarily turn an abstraction into something concrete (See Ultramercial, Inc. v. Hulu, LLC, _ F.3d_, 2014 WL 5904902, (Fed. Cir. Nov. 14, 2014). Hence the claims do not recite significantly more than an abstract idea.
For these reasons and those stated in the rejection above, rejection of claims 1-20 under 35 U.S.C. 101 is maintained by the Examiner.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure are listed on the enclosed PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER J BRIDGES whose telephone number is (571)270-5451. The examiner can normally be reached 7:00am-3:30pm M-F EDT.
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/CHRISTOPHER BRIDGES/Primary Examiner, Art Unit 3693
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