DETAILED ACTION
Status of Claims
1. This office action is in response to filing dated 10/22/2025.
2. Claims 21-40 are pending.
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 21-40
Claims 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: Claims 21-30 are directed to a card (system); claims 31-40 are to a method – each of which is one of the four statutory categories of invention.
Step 2A: A claim is eligible at revised Step 2A unless it recites a judicial exception and the exception is not integrated into a practical application of the application.
Prong 1: Prong One of Step 2A evaluates whether the claim recites a judicial exception (an abstract idea enumerated in the 2019 PEG, a law of nature, or a natural phenomenon).
Groupings of Abstract Ideas:
I. MATHEMATICAL CONCEPTS
A. Mathematical Relationships
B. Mathematical Formulas or Equations
C. Mathematical Calculations
II. CERTAIN METHODS OF ORGANIZING HUMAN ACTIVITY
A. Fundamental Economic Practices or Principles (including hedging, insurance, mitigating risk)
B. Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)
C. Managing Personal Behavior or Relationships or Interactions between People (including social activities, teaching, and following rules or instructions)
III. MENTAL PROCESSES.
Concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
See MPEP 2106.04 (a) (2) Abstract Idea Groupings [R-10.2019]
Independent clams 21 and 31 are directed to – determining and storing data associated with transaction attempt – that falls under the Mental Process and/or Certain Methods of Organizing Human Activity groupings of abstract ideas.
The Federal Circuit has consistently held that abstract ideas include the concepts of collecting data, analyzing the data, and displaying the results of the collection and analysis, including when limited to particular content. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“[S]electing information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas.”); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (drawn to the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory.); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d at 1092, 1095-97 (Fed. Cir. 2016) (a system that develops a full picture of users’ activities on a network by analyzing their access to patient data and comparing their actions to criteria performs mental processes without improving technology to combine disparate data sources).
See also PTAB decision in the parent application Ex parte Jeffrey Rule, Appeal 2023-003899, Application 16/863,437, Page 11 (“At best, claim 9 recites an improvement to certain methods of organizing human activity and mental processes”).
The dependent claims are directed to – data includes transaction identifier or transaction terminal identifier; encrypt stored data using an encryption algorithm; encrypt data using cryptographic algorithm, customer identifier and a cryptographic private key or session key – that recite multiple abstract ideas including Mathematical Concepts, Mental Process, and Certain Methods of Organizing Human Activity.
See MPEP 2106.04 Eligibility Step 2A: Whether a Claim is Directed to a Judicial Exception [R-07.2022]
B. Evaluating Claims Reciting Multiple Judicial Exceptions
A claim may recite multiple judicial exceptions. For example, claim 4 at issue in Bilski v. Kappos, 561 U.S. 593, 95 USPQ2d 1001 (2010) recited two abstract ideas, and the claims at issue in Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 101 USPQ2d 1961 (2012) recited two laws of nature. However, these claims were analyzed by the Supreme Court in the same manner as claims reciting a single judicial exception, such as those in Alice Corp., 573 U.S. 208, 110 USPQ2d 1976.
In other claims, multiple abstract ideas, which may fall in the same or different groupings, or multiple laws of nature may be recited. In these cases, examiners should not parse the claim. For example, in a claim that includes a series of steps that recite mental steps as well as a mathematical calculation, an examiner should identify the claim as reciting both a mental process and a mathematical concept for Step 2A Prong One to make the analysis clear on the record.
See also RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract.”).
Hence under Prong One of Step 2A, the claims recite multiple judicial exceptions.
Prong 2: Prong Two of Step 2A evaluates whether the claim recites additional elements that integrate the judicial exception into a practical application of the exception.
Limitations that are indicative of integration into a practical application include:
Improvements to the functioning of a computer or to any other technology or technical field – see MPEP § 2106.05(a)
Applying the judicial exception with, or by use of, a particular machine –see MPEP § 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing – see MPEP § 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception – see MPEP §2106.05(e)
Limitations that are not indicative of integration into a practical application include:
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 an abstract idea – see MPEP § 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception – see MPEP § 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP § 2106.05(h)
Additional element(s) recited in the claims, beyond the abstract idea, include: a transaction card comprising a substrate and processing circuitry; a quality assurance applet; one or more interfaces including NFC or EMV interface, and configured to couple with transaction terminals; JavaCard applet which is securely loaded and executed by the processing circuitry within a trusted execution environment of the transaction card, the transaction card being a secure smart card device with constrained memory resources; contact pad assembly.
When determining whether a claim simply recites a judicial exception with the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer, the MPEP suggests the following consideration:
MPEP 2106.05(f) Mere Instructions To Apply An Exception [R-10.2019]:
(1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words “apply it”. See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). In contrast, claiming a particular solution to a problem or a particular way to achieve a desired outcome may integrate the judicial exception into a practical application or provide significantly more. See Electric Power, 830 F.3d at 1356, 119 USPQ2d at 1743.
By way of example, in Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described “the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’” 850 F.3d at 1339-40; 121 USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of "collecting, displaying, and manipulating data." 850 F.3d at 1340; 121 USPQ2d at 1946. In addition to the abstract idea, the claims also recited the additional element of modifying the underlying XML document in response to modifications made in the dynamic document. 850 F.3d at 1342; 121 USPQ2d at 1947-48. Although the claims purported to modify the underlying XML document in response to modifications made in the dynamic document, nothing in the claims indicated what specific steps were undertaken other than merely using the abstract idea in the context of XML documents. The court thus held the claims ineligible, because the additional limitations provided only a result-oriented solution and lacked details as to how the computer performed the modifications, which was equivalent to the words “apply it”. 850 F.3d at 1341-42; 121 USPQ2d at 1947-48 (citing Electric Power Group., 830 F.3d at 1356, 1356, USPQ2d at 1743-44 (cautioning against claims “so result focused, so functional, as to effectively cover any solution to an identified problem”)).
Here, Examiner finds that the following claim limitations have been recited in a result-focused and functional way lacking in technical details such they cover any solution to an identified problem:
detect an initiation of a transaction attempt automatically upon the transaction card entering the magnetic field of a transaction terminal … (claims 21, 31)
wherein the quality assurance applet is configured as default application on the transaction card by being installed with a default parameter set, thereby making it selectable or selected default by a transaction terminals’ application selection process upon detection of the transaction attempt (claim 23)
wherein the quality assurance applet is configured to increment at least one counter each time a read operation for the stored data occurs (claim 26)
wherein the quality assurance applet is pre-configured as a default application on the transaction card through an installation process that sets a default parameter, causing the quality assurance applet to be automatically selected or prioritized for execution by a transaction terminal's application selection logic during the transaction attempt (claim 33)
incrementing, by the quality assurance applet, at least one of the more transaction counters upon each successful read operation of the recorded specific data elements, said incremented counter value serving a defense mechanism against relay attacks or as a synchronization aid for a remote data validation server (claim 38)
All purported inventive concepts reside in how the ‘detect initiation of a transaction attempt,’ ‘making it selectable or selected by default,’ ‘causing the quality assurance applet to be automatically selected or prioritized for execution,’ ‘serving a defense mechanism against relay attacks’ etc., are technically accomplished and not in how the processing technologically achieves the result which neither the specification or the drawings shed any light on.
Examiner thus finds that any additional element(s), beyond the judicial exception, has been recited at a high level of generality such that the claim limitations amount to no more than mere instructions to apply the exception using generic components (MPEP 2106.05(f)) or insignificant data gathering activities (MPEP 2106.05(g)).
The combination of limitations – detecting and storing transaction attempts at a transaction terminal – does not purport to improve the functioning of a computer or effect an improvement in any other technology or technical field. Instead, the additional elements do no more than “use the computer as a tool” and/or “link the use of the judicial exception to a particular technological environment or field of use.” See MPEP 2106.05(h) Field of Use and Technological Environment [R-10.2019] (“vi. Limiting the abstract idea of collecting information, analyzing it, and displaying certain results of the collection and analysis to data related to the electric power grid, because limiting application of the abstract idea to power-grid monitoring is simply an attempt to limit the use of the abstract idea to a particular technological environment, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)”). The focus of the claims is not on improvement in computers, but on certain independently abstract ideas – detecting transaction attempts – that merely use applet as a tool. Steps that do no more than spell out what it means to “apply it on a computer” cannot confer patent eligibility.
Therefore, when considered individually or in combination, the additional elements do not integrate the judicial exception into a practical application.
For the above reasons, claims are ineligible under Step 2A.
Step 2B:
In Step 2B, the evaluation consists of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception.
As discussed in Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using generic computer components, which is insufficient to provide an inventive concept.
See MPEP 2106.05(f) Mere Instructions To Apply An Exception [R-10.2019].
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.
When considered individually or as an ordered combination, the additional elements fail to transform the abstract idea of – detecting and storing transaction attempts at a transaction terminal – into significantly more.
Hence, the claims are ineligible under Step 2B.
Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to an abstract idea without significantly more.
Conclusion
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/ARUNAVA CHAKRAVARTI/Primary Examiner, Art Unit 3692