DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action is in response to the Application filed November 1, 2024. Claims 1-12 are pending in this case.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on November 1, 2024, and February 11, 2025, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Regarding claims 1-12–
Claims 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 5-8 are directed to a system, while claims 1-4 are directed to a method, and claims 9-12 are directed toward a storage. Therefore, these claims fall within the four statutory categories of invention.
The claims recite verifying information before permitting a transaction request. Specifically, the claims recite receiving a nonsensitive data structure, verifying the nonsensitive data and obtaining the sensitive data linked thereon, and providing a form for a transaction request, which is described a commercial or legal interaction/ transaction and is therefore grouped within the within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP 2106). Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; MPEP 2106).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106), the additional elements of the claims such as the processor, application programming interface, and storage medium, merely use a computer as a tool to perform an abstract idea. Specifically, the processor, application programming interface, and storage medium, perform the steps or functions of receiving a nonsensitive data structure, verifying the nonsensitive data and obtaining the sensitive data linked thereon, and providing a form for a transaction request. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106), the additional elements of using processor, application programming interface, and storage medium, to perform the steps of verifying information before permitting a transaction request amounts to no more than using a computer to automate and/or implement the abstract idea of verifying information before permitting a transaction request. As discussed above, taking the claim elements separately, the processor, application programming interface, and storage medium perform the steps or functions of receiving a nonsensitive data structure, verifying the nonsensitive data and obtaining the sensitive data linked thereon, and providing a form for a transaction request. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of receiving a receiving a nonsensitive data structure, verifying the nonsensitive data and obtaining the sensitive data linked thereon, and providing a form for a transaction request. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. 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 (f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 2-4, 6-8, and 10-12, further describe the abstract idea of verifying information before permitting a transaction request. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Regarding claims 9-12 –
Claim 9 is additionally rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter.
Claim 9 is directed to a transitory signal as it recites a "computer-readable storage medium." As recited, the "computer-readable storage medium" is broad enough to read on a transitory signal.
Transitory signals are defined according to the "Microsoft Press Dictionary Definition" or "IEEE Definition". According to MPEP § 2106, however, there are four categories of invention: process, machine, article of manufacture or composition of matter. Therefore, as "transitory signals" are neither a category of invention nor a subset of one of the categories it does not represent patent eligible subject matter. In re Nuijten, Docket no. 2006-1371 (Fed. Cir. Sept. 20, 2007) (slip. op. at 18).n the abstract idea.
Claims 10-12 are rejected under similar criteria as each depends from claim 9.
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.
Claims 1, 4-6, 8-10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Baskaran et al (US 2024/0362611) in view of Drapeau et al (US 12,212,681).
Regarding claims 1, 5, and 9 -
Baskaran discloses a computer-implemented method for transaction processing (abs), the method comprising acts of:
receiving a data structure associated with a proposed transaction, the data structure comprising at least one non-sensitive expression representing sensitive data regarding the proposed transaction; (par 79)
evaluating, within a secure environment, the at least one non-sensitive expression to obtain the sensitive data; (par 79, 90) and
Drapeau discloses, as Baskaran does not specifically disclose, using the sensitive data to construct an application programming interface (API) message to be submitted to a transaction processing gateway to request processing of the proposed transaction. (col 8 ln 59-col 9 ln 10, where card data is sensitive data)
It would be obvious to one of ordinary skill in the art to combine Baskaran with Drapeau in order to eliminate a lengthy certification process while security and integrity of the electronic payment transaction process is not weakened or compromised.
Regarding claims 2, 6, and 10 --
Baskaran discloses wherein:
the data structure is generated by at least one software component executing outside the secure environment; (par 80) and
Baskaran et al fail to expressly disclose that the data structure is formatted according to an API specification of the transaction processing gateway.
However, the difference between one type of formatting or another are only found in the non-functional descriptive material and are not functionally involved in the steps recited. The various steps would be performed the same regardless of the descriptive material since none of the steps explicitly interact therewith. Limitations that are not functionally interrelated with the useful acts, structure, or properties of the claimed invention carry little or no patentable weight. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability, see In re Ngai, 70 USPQ2d 1862 (CAFC 2004); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983); In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994).
Therefore, it would also have been obvious to a person of ordinary skill in the art at the time of applicant’s invention to format the data structure according to an API specification because such data does not functionally relate to the steps in the method claimed and because the subjective interpretation of the data does not patentably distinguish the claimed invention.
Regarding claims 4, 8, and 12 –
Baskaran discloses the at least one non-sensitive expression comprises a first non-sensitive expression; (par 79, 90)
the sensitive data comprises first sensitive data; (par 79, 90)
the one or more second patterns comprise a second non-sensitive expression representing second sensitive data regarding the proposed transaction; (par 79, 90)
the one or more arguments to which the selected function is applied comprise the second sensitive data; (par 79, 90) and
the act of evaluating the at least one non-sensitive expression further comprises retrieving the second sensitive data from a database within the secure environment. (par 79, 90)
Claims 3, 7, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Baskaran et al (US 2024/0362611) in view of Drapeau et al (US 12,212,681), and further in view of Kraus et al (US 2020/0327576).
Regarding claims 3, 7, and 11 –
Baskaran in view of Drapeau discloses as above.
Baskaran discloses wherein the act of evaluating the at least one non-sensitive expression comprises applying the selected function to the one or more arguments to obtain the sensitive data. (par 79)
Kraus discloses, as Baskaran does not, parsing the at least one non-sensitive expression to identify a first pattern indicating a selected function and one or more second patterns indicating, respectively, one or more arguments. (par 42).
It would be obvious to one of ordinary skill in the art to combine Baskaran with the parsing as in Krauss in order to increase transaction security.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sampath (US 2025/0252427) teaches Systems and methods for performing a secure electronic transaction using a hosted service.
Barcastow (US 2024/0054492) teaches Method and system for multi-modal transaction authentication.
Huang et al (US 2014/0244456) teach Tax document imaging and processing.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CRISTINA OWEN SHERR whose telephone number is (571)272-6711. The examiner can normally be reached 8:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John W Hayes can be reached at 571-272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Cristina Owen Sherr/Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697
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