DETAILED ACTION
Status of Claims
Applicant has elected Group I, claims 1-7, with traverse, in response to response to restriction requirement mailed 27 February 2026.
Examiner acknowledges Applicant’s agreement regarding traversal of restriction requirement. However, augments are not persuasive.
Applicant argues that the apparatus claimed in Group II is specifically configured to perform the method of Group I, and the non-transitory computer-readable medium of Group III contains instructions that, when executed, cause a processor to carry out the same method [remarks page 9]. Examiner disagrees.
Examiner restriction requirement indicates that maintaining a system of record comprising one or more entries in a first database claimed in Group I, is different than sending messages to a database in Group II, which is different than populating a database entry in a database in Group III. Accordingly, Applicant has not provided evidence how the inventions are obvious variants nor how the inventions are not different in scope and utility. See MPEP § 806.05(d). However, the Applicant can maintain the non-elected claims as “withdrawn” until the time the elected claims are deemed allowable.
Accordingly, claims 1-20 remain pending, wherein claims 8-20 have been withdrawn from consideration.. Objections and rejection are recited below. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
This application, filed 06 December 2024 claims priority from provisional application 63/606,992, filed 06 December 2023. Accordingly, this application is given priority from 06 December 2023.
Claim Interpretation
Regarding claims 1-7, clauses such as “to generate the one or more encrypted keys” in claim 3 are merely statements of intended use which do not affect the method step of “sending a request to a hardware security module (HSM)”; “to generate” is not explicitly claiming “generating the one or more encrypted keys” Similar phrasing will be interpreted accordingly. Terminology such as “wherein the account identifier, issuer identifier, and unique identifier are encrypted with the one or more encrypted keys …” is not clearly claiming “encrypting the account identifier, issuer identifier, and unique identifier with the one or more encrypted keys”; as such, the wherein clause is given limited patentable weight in that it merely conveys functionally descriptive material.
A recitation of intended use or purpose of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use or fulfilling said purpose, then it meets the claim.
The subject matter of a properly construed claim is defined by the terms that limit its scope. It is this subject matter that must be examined. As a general matter, the grammar and intended meaning of terms used in a claim will dictate whether the language limits the claim scope. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. The following are examples of language that may raise a question as to the limiting effect of the language in a claim:
(A) statements of intended use or field of use,
(B) "adapted to" or "adapted for" clauses,
(C) "wherein" clauses, or
(D) "whereby" clauses.
This list of examples is not intended to be exhaustive. See also MPEP § 2111.04.
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 1-7 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.
In the instant case, claims 1-7 are directed to a “method” which is one of the four statutory categories of invention.
Claims are directed to the abstract idea of sending, storing and receiving data which is grouped under a method of organizing human activity.
In prong one of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register, Vol. 84, No. 5, p.p. 50-57 (Jan. 7, 2019))). Claims recite:
receiving a request to issue a first contactless card to be associated with a user account;
generating a first unique identifier for the contactless card, the first unique identifier being separate from a primary account number for the contactless card;
maintaining a system of record comprising one or more entries in a first database, each of the one or more entries including a recorded unique identifier associated with a corresponding contactless card and an issuer identifier of an issuer of the contactless card, each contactless card being associated with one of a plurality of user accounts;
updating the system of record with a new entry, including the first unique identifier for the first contactless card and the issuer identifier of the issuer of the contactless card, the new entry being assigned to the user account from which the request was received; and
sending the first unique identifier “to storage”, wherein the personalization server is configured to store the first unique identifier in a memory of the first contactless card during personalization of the first contactless card.
Accordingly, the claim recites an abstract idea (See 2019 Revised Patent Subject Matter Eligibility Guidance).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional elements of the claim such as:
a system of record,
a first database
a personalized server
represent the use of a computer as a tool to perform an abstract idea and doe no more than generally link the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. automate) the acts of “collecting information, analyzing the information and providing the results of the analysis”.
When analyzed under step 2B (See 2019 Revised Patent Subject Matter Eligibility Guidance), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself because the ordered combination does not offer substantially more than the sum of the functions of the elements when each is taken alone.
The computer and computer program instructions are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, is merely the combined and coordinated execution of generic computer functionalities. These functionalities are well-understood, routine and conventional activities previously known to the industry. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Thus, viewed as a whole, the combination of elements recited in the claims merely describe the concept of sending, storing and receiving data using computer technology (e.g. the processor).
Hence, claims are not patent eligible.
Dependent claims 2-7 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to a judicial exception (Step 2A- Prong One). Nor are the claims directed to a practical application to a judicial exception (Step 2A- Prong Two).
For example, claims 4 and 5 are silent as to “additional elements” which integrate the abstract idea into a practical application of a judicial exception, or that are sufficient to amount to significantly more than the judicial exception. They merely further describe the abstract idea of sending, storing and receiving data.
In claims 2, 3, 6, and 7 the features:
one or more encrypted keys;
a hardware security module (HSM);
an account eligibility server; and
a second database
add technology to the abstract idea of the independent claim. However, each of these is a generic technological component, and its use is in its normal, expected, and routine manner. The components are recited at a high level of generality which do not improve another technology or technical field nor the functioning of the computer itself.
Accordingly, none of the dependent claims add a technological solution to the method of organizing human activity in the independent claim.
Conclusion
The claims as a whole do not amount to significantly more than the abstract idea itself. This is because the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, 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.
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 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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Hart et al (US Pub. No. 20200104830 A1) in view of Hayes et al (US Patent No. 10,984,411 B1).
Regarding claim 1, Hart teaches systems and methods for implementing and managing cryptographic authentication of contactless cards [0007]. He teaches:
receiving a request to issue a first contactless card to be associated with a user account – [0009];
generating a first unique identifier for the contactless card, the first unique identifier being separate from a primary account number for the contactless card – [0009];
maintaining a system of record comprising one or more entries in a first database, each of the one or more entries including a recorded unique identifier associated with a corresponding contactless card and an issuer identifier of an issuer of the contactless card, each contactless card being associated with one of a plurality of user accounts – [0008], [0009], [0010], [0035] and [0038]; and
updating the system of record with a new entry… for the first contactless card …. from which the request was received – [0114], [0115], [0116], [0128] and [Fig. 11].
Hart does not explicitly disclose:
updating the system of record with a new entry, including the first unique identifier for the first contactless card and the issuer identifier of the issuer of the contactless card, the new entry being assigned to the user account from which the request was received; and
sending the first unique identifier to a personalization server, wherein the personalization server is configured to store the first unique identifier in a memory of the first contactless card during personalization of the first contactless card.
However, Hayes teaches apparatuses, systems, and methods that generally relate to electronic repositories including electronic wallets, for secure and authenticated data blocks [col. 1 lines 5-15]. He teaches a digital copy of personalized credentials including a credit card number (Applicant’s unique identifier) being stored on hardware components - i.e. Secure Elements such as a server or in the cloud [col. 12 lines 12-24].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Hart’s disclosure to include storing digital copy of personalized credentials including a credit card number in a server as taught by Hayes to benefit from being secure and authenticated, wherein one without authority or without utilizing proper procedures, may not modify this data - Hayes [col. 1 lines 15-20].
Regarding claim 2, Hart does not explicitly disclose:
generating personalization data for the personalization server, the personalization data including at least an account identifier and one or more encrypted keys; and
sending the personalization data to the personalization server for the personalization server to store the personalization data in the memory of the first contactless card.
However, Hayes teaches creating and storing encryption keys [col. 4 lines 7-28].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Hart’s disclosure to include creating and storing encryption keys as taught by Hayes to benefit from being secure and authenticated, wherein one without authority or without utilizing proper procedures, may not modify this data - Hayes [col. 1 lines 15-20].
Regarding claim 3, Hart does not explicitly disclose:
sending a request to a hardware security module (HSM) to generate the one or more encrypted keys; and
receiving a reply from the HSM that includes the one or more encrypted keys.
However, Hayes teaches a first mobile wallet (sender mobile wallet) sends a message to a second mobile wallet (recipient mobile wallet) by a mobile wallet message transfer agent (MTA) [col. 4 lines 7-28]. The MTA of the sender mobile wallet retrieves the public key of the recipient mobile wallet from a public key server (PKS) provided by the recipient's mobile wallet domain. The sender mobile wallet encrypts the message with this public key, sends it to the MTA in its mobile wallet domain, which then sends the message to an MTA provided by the recipient's mobile wallet domain. The MTA of the sender mobile wallet retrieves the public key of the recipient mobile wallet from a public key server (PKS) provided by the recipient's mobile wallet domain. The sender mobile wallet encrypts the message with this public key, sends it to the MTA in its mobile wallet domain, which then sends the message to an MTA provided by the recipient's mobile wallet domain [Id.].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Hart’s disclosure to include a sender mobile wallet retrieving a public key of a recipient mobile wallet from a public key server as taught by Hayes since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding claim 4, Hart does not explicitly disclose the account identifier, issuer identifier, and unique identifier being encrypted with the one or more encrypted keys before being sent to the memory for storage thereon.
However, Hayes teaches this at [col. 4 lines 7-28].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Hart’s disclosure to include encrypting data before being stored in memory as taught by Hayes to benefit from being secure and authenticated, wherein one without authority or without utilizing proper procedures, may not modify this data - Hayes [col. 1 lines 15-20].
Regarding claims 5, Hart teaches the first unique identifier being a string of binary coded decimal numbers – [0008] and [0010].
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hart in view of Hayes, in further view of Patricelli et al (US Patent No. 7197468 B1).
Regarding claim 6, neither Hart nor Hayes explicitly disclose:
sending a request to an account eligibility server to determine whether the user account is eligible to receive issuance of the first contactless card; and
proceeding with generating the first unique identifier for the contactless card and issuing the first contactless card in response to a reply from the account eligibility server indicating that the user account is eligible to receive issuance of the first contactless card.
However, Patricelli teaches method and system for processing transactions involving those accounts that are handled by multiple entities having multiple transaction substantiation modes [col. 1 lines 15-25]. He teaches, based on the received eligibility data, which the service agent uses to populate its eligibility database, the service agent issues payment cards to the participating employees for debiting their reimbursing accounts [col. 8 lines 15-25].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Hart’s disclosure to include issuing payment cards for reimbursement accounts based on as taught by Patricelli since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Additional Comments
Regarding claim 7, in view of pending rejections, the Examiner is unable to locate prior art references that anticipate the claimed invention or renders it obvious.
Conclusion
The prior art of record and not relied upon is considered pertinent to Applicant’s disclosure:
Rule et al: “SYSTEMS AND METHODS FOR CRYPTOGRAPHIC AUTHENTICATION OF CONTACTLESS CARDS”, (US Pub. No. 20200106616 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD J BAIRD whose telephone number is (571)270-3330. The examiner can normally be reached 7 am to 3:30 pm M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If Applicant wishes to correspond to the Examiner via email, Applicant needs to file an AUTHORIZATION FOR INTERNET COMMUNICATIONS IN A PATENT APPLICATION form. The form may be downloaded at:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdf
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan Donlon can be reached at 571-270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EDWARD J BAIRD/Primary Examiner, Art Unit 3692
Prosecution Insights