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 amendments filed on June 26, 2026.
• Claims 1-2, 8, and 12-13 have been amended and are hereby entered.
• Claims 1-20 are currently pending and have been examined.
• This action is made FINAL.
Response to Arguments
Applicant’s arguments filed June 26, 2026 have been fully considered but they are not persuasive.
The Examiner is withdrawing the drawing objections due to Applicant’s amendments.
The Examiner is withdrawing the 35 USC § 112 rejections due to Applicant’s amendments.
The Examiner is withdrawing the 35 USC § 103 rejections due to Applicant’s amendments.
Applicant’s arguments with respect to 35 USC § 101 have been fully considered and are not persuasive.
Regarding Applicant’s argument on pages 12-14, that the claims do not recite a judicial exception, the Examiner respectfully disagrees. Applicant further argues on page 13 that the claims are directed to a technical authentication protocol carried out among networked computing systems. The argument has been considered and is not persuasive. As indicated in the 35 USC § 101 rejection below, the claimed invention allows for pre-authenticating a transaction in advance and facilitating transaction processing with an issuer for the pre-authenticated transaction, for example, when a user wants to make a large, atypical purchase in advanced and does not want the card to be declined at the merchant location. The Specification at [0019] states “The cardholder 201 accesses the transaction pre-authentication service application 140 to communicate with the transaction pre-authentication service system 118, in particular, to pre-authenticate transactions, such as timebound, large, or atypical transactions, using the transaction pre-authentication service system 118.” The Specification and claims focus on an improvement to the process of pre-authenticating a transaction in advance of the transaction and facilitating transaction processing with an issuer for the pre-authenticated transaction, which is a fundamental economic principle or practice of mitigating risk and a commercial and legal interaction including sales activities or behaviors which falls within the category of Certain Methods of Organizing Human Activity and therefore is an abstract idea.
Regarding Applicant’s arguments on pages 14-16, that the claims integrate a practical application, the Examiner respectfully disagrees. Under the Patent Subject Matter Eligibility analysis, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that generally link the use of the judicial exception into a particular technological environment or field of use-see MPEP 2106.05(h). Here the claims recite a system comprising: one or more processors; and a memory storing computer-executable instructions thereon, the computer-executable instructions, when executed by the one or more processors, causing the one or more processors to perform operations; digitally signed; a cardholder device; a three-domain secure (3DS) authentication request; a merchant device such that they amount to no more than generally linking the use of the judicial exception to a particular technological environment or field of use (e.g., a computer network) (see MPEP 2106.05(h)).
Furthermore, and in response to Applicant’s arguments on page 14 where Applicant argues a particular technical solution to a technical problem, in determining whether a claim integrates a judicial exception into a practical application, a determination is made of whether the claimed invention pertains to an improvement in the functioning of the computer itself or any other technology or technical field (i.e., a technological solution to a technological problem). Here, the claims recite generic computer components, i.e., a generic processor, a memory storing a computer program executable by the processor to perform the claimed method steps and system functions. The processor, memory and system are recited at a high level of generality and are recited as performing generic computer functions customarily used in computer applications.
Furthermore, the Specification describes a problem and improvement to a business or commercial process of improving security of pre-authenticated transactions at least at [0003], stating: “ In situations like concert tickets or other time-limited purchases, this creates extra friction and stress, and may result in lost transactions. Pre-authenticating a transaction, rather than simply pre-authorizing the transaction, allows the issuer to immediately authorize the transaction upon merchant request, with no delay to the end user or security concerns.”
Regarding Applicant’s arguments on pages 14-15 that the claims recite a particular mechanism for achieving a result and not merely claiming the result itself, the argument has been considered and is not persuasive. Applicant further argues on page 15 that the limitations are not field of use or generic instructions to apply on a computer. The Examiner respectfully disagrees. In response to this argument, the Examiner notes mere automation of a process, without improving a technical aspect of that process, does not integrate the abstract ideas into a practical application. See Intellectual Ventures 1 LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (“merely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea.”).
Regarding Applicant’s arguments on pages 16-17, that the claims recite significantly more than the abstract idea, the Examiner respectfully disagrees. Applicant further argues, on page 16, that the claims an arrangement that is non-conventional and non-generic. The Examiner respectfully disagrees. The limitations are directed to an abstract idea and when determining if the claims are directed to significantly more, the additional limitations of the claims in addition to the abstract idea are analyzed. In the instant application, the additional elements of the claim include a system comprising: one or more processors; and a memory storing computer-executable instructions thereon, the computer-executable instructions, when executed by the one or more processors, causing the one or more processors to perform operations; digitally signed; a cardholder device; a three-domain secure (3DS) authentication request; a merchant device. The additional limitations, when considered both individually and in combination, do not affect an improvement to another technology or technological field; the claims do not amount to an improvement to the functioning of the computer itself; and the claims do not move beyond a general link of use of an abstract idea to a particular technological environment. Therefore, the claims merely amount to merely generally linking the use of the abstract idea to a particular technological environment or field of use (e.g., a computer network), and is considered to amount to nothing more than requiring a generic computer network to carry out the abstract idea itself. The specifics about the abstract idea do not overcome the rejection.
Applicant’s reliance upon Cosmokey, on pages 16-17, is misplaced. The claims here are not like those the Court found patent eligible in CosmoKey, in which the court found that the claims provided a technical improvement over conventional authentication methods, specifically, in the inventive nature of the steps in which the complexity of the authentication function can be reduced significantly because the only activity that is required from the user for authentication purposes is to activate the authentication function at a suitable timing for the transaction, enabling authentication to be performed with fewer resources, less user interaction, and simpler devices. CosmoKey at 13. The court in CosmoKey held that the claims constitute an improvement that increases computer and network security, prevents a third party from fraudulently identifying itself as the user, and is easy to implement and can be carried out even with mobile devices of low complexity, and that the claims recited an inventive concept by requiring a specific set of ordered steps that go beyond the abstract idea and improve upon the prior art by providing a simple method that yields higher security. CosmoKey at 14. In contrast, the claims of the instant application do not effect improvement in the technical field of authentication such that the complexity of the authentication function can be reduced significantly, thereby enabling authentication to be performed with fewer resources, less user interaction, and simpler devices.
The claims are not patent eligible.
For the reasons above, Applicant’s arguments are not persuasive.
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 recites an abstract idea without significantly more. Independent claims 1 and 12 are directed to a method (claim 1) and a system (claim 12). Therefore, on its face, each independent claim 1 and 12 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 and 12 recite, in part, a method and a system, of organizing human activity. Using the limitations in claim 1 to illustrate, the claim recites receiving a pre-authentication request; validating the pre-authentication request; receiving pre-authentication data, the pre-authentication data including a primary account number and being associated with a specific pre-authenticated transaction; receiving, from an issuer, authentication success information indicating authentication of the cardholder, the authentication success information indicating that the issuer authenticated the cardholder via a challenge/response authentication method as part of pre-authenticating the specific pre-authentication transaction; generating an accountholder authentication value (AAV) for the specific pre-authenticated transaction, the AAV binding the cardholder to the specific pre-authenticated transaction; transmitting the AAV to the issuer; receiving, after transmitting the AAV to the issuer, a transaction authentication request message that is an authentication request and that includes cardholder transaction data, the transaction authentication request message being associated with a subsequent transaction corresponding to the specific pre-authenticated transaction; extracting transaction details from the received cardholder transaction data, the transaction details including at least a merchant identifier and transaction data; determining that the subsequent transaction corresponds to the specific pre-authenticated transaction by matching the merchant identifier and the transaction data of the extracted transaction details to the received pre-authentication data; based on the matching, generating a modified transaction authentication request message by appending the AAV to the authentication request message; and transmitting the modified transaction authentication request message to the issuer. The Specification at [0019] states “The cardholder 201 accesses the transaction pre-authentication service application 140 to communicate with the transaction pre-authentication service system 118, in particular, to pre-authenticate transactions, such as timebound, large, or atypical transactions, using the transaction pre-authentication service system 118.” 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 invention allows for pre-authenticating a transaction in advance and facilitating transaction processing with an issuer for the pre-authenticated transaction, for example, when a user wants to make a large, atypical purchase in advanced and does not want the card to be declined at the merchant location, which is a fundamental economic principle or practice of mitigating risk and a commercial and legal interaction including sales activities or behaviors. The mere nominal recitation of a computer-implemented method, a cardholder device, and merchant device do not take the claim out of the methods of organizing human activity grouping. 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 system comprising: one or more processors; and a memory storing computer-executable instructions thereon, the computer-executable instructions, when executed by the one or more processors, causing the one or more processors to perform operations; digitally signed; a cardholder device; a three-domain secure (3DS) authentication request; a merchant device are recited at a high-level of generality (i.e., as a generic computer performing generic computer functions of receiving a request, receiving authentication success indication, generating and transmitting a value, receiving a message, extracting and matching details, appending a message, and transmitting the appended message) such that it amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use (e.g., a computer network).-see MPEP 2106.05(h).
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 generally linking the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). Generally linking the use of the judicial exception to a particular technological environment or field of use 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 2-3, 5-7, 9-11, 13-14, 16-18, and 20 simply help to define the abstract idea. Dependent claims 4, 8, 15, 19 simply further describes the technological environment. 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 1-20 are ineligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20210090074 A1 (“Powell”) discloses providing, along with a token, a token assurance level and data used to generate the token assurance level. At the time a token is issued, one or more Identification and Verification (ID&V) methods may be performed to ensure that the token is replacing a PAN that was legitimately used by a token requestor. A token assurance level may be assigned to a given token in light of the type of ID&V that is performed and the entity performing the ID&V. Different ID&Vs may result in different token assurance levels. An issuer may wish to know the level of assurance and the data used in generating the level of assurance associated with a token prior to authorizing a payment transaction that uses the token.
US 20180053005 A1 (“Kamal”) discloses storing, in a computing device, an encrypted biometric template; storing, in a first memory of the computing device, at least a first application program; storing, in a second memory of the computing device, at least a second application program and an encryption key, wherein the second memory is a trusted execution environment; receiving, by the second application program of the computing device, a validation request submitted by the first application program; receiving, by an input device of the computing device, biometric data; decrypting, by the second application program of the computing device, the encrypted biometric template using the encryption key; validating, by the second application program of the computing device, the received biometric data using the decrypted biometric template; and transmitting, by the second application program of the computing device, a result of the validation to the first application program.
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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/RAVEN E YONO/Primary Examiner, Art Unit 3694
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