DETAILED ACTION
Acknowledgements
This office action is in response to the claims filed 01/21/2026.
Claims 1-19 are elected.
Claims 1 and 13 are amended.
Claim 20 is non-elected and withdrawn.
Claims 1-19 are pending.
Claims 1-19 have been examined.
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 .
Restriction/Election Acknowledgement
The Applicant’s election on claims 1-19 without traverse in the reply on 01/21/2026 is acknowledged. Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group(s).
Applicant has amended independent claim 1 and 13 to two different subject matter and the claims are subject to further restriction. Claim 1 recites “wherein in a collector mode of the secure token transaction unit, the received offline token is stored such that a spendability thereof in at least one further token transaction is deactivated for the secure token transaction unit (STU)” and claim 13 recites “in a collector mode of the secure token transaction unit, restricting a spendability of the at least one offline such that the spendability in at least one further token transaction is deactivated for the secure token transaction(STU)”. For the purpose of claim interpretation, these limitations will be treated as meaning the same. Applicant is limited to a single invention.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “receiving by an offline token receiving unit”, “storing … by an offline token storage unit”, “online token receiving unit” and “online token storage unit”, “a marking and/or encryption unit”, “a limit management unit” in claims 1, 7, 8, 10, 13, and 18. The “unit” is a nonce term.
According to the disclosure(¶ 57), “The secure token transaction unit STU comprises an offline token receiving unit 101 and an offline token storage unit 102. The offline token receiving unit 101 is configured for receiving at least one offline token of an electronic token transaction system TS from at least one other secure token transaction unit ASTU of the electronic token transaction system TS…. Optionally, the secure token transaction unit STU further comprises an online token receiving unit 105. The online token receiving unit 105 is configured for receiving at least one online token of an electronic token transaction system TS of at least one other secure token transaction unit ASTU of the electronic token transaction system TS. The secure token transaction unit STU further comprises an online token storage unit 106.” The disclosure does not appear to define what the “units” are structurally and what structure performs the claimed functions.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Subject Matter Eligibility Standard
When considering subject matter eligibility under 35 U.S.C. § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter (101 Analysis: Step 1). Even if the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) (101 Analysis: Step 2a(Prong 1), and if so, Identify whether there are any additional elements recited in the claim beyond the judicial exception(s), and evaluate those additional elements to determine whether they integrate the exception into a practical application of the exception. (101 Analysis: Step 2a (Prong 2). If additional elements does not integrate the exception into a practical application of the exception, claim still requires an evaluation of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception. If the claim as a whole amounts to significantly more than the exception itself (there is an inventive concept in the claim), the claim is eligible. If the claim as a whole does not amount to significantly more (there is no inventive concept in the claim), the claim is ineligible. (101 Analysis: Step 2b).
The 2019 PEG explains that the abstract idea exception includes the following groupings of subject matter: a) Mathematical concepts b) Certain methods of organizing human activity and c) Mental processes
Analysis
In the instant case, claim 1 is directed to an article of manufacture, and claim 13 is directed to a method.
Step 2a.1– Identifying an Abstract Idea
The claims recite the steps of “receiving token… storing … token … and restricting a spendability ….” The recited limitations fall within the certain methods of organizing human activity grouping of abstract ideas, specifically, fundamental economic principles, for example, placing limits on spending. Accordingly, the claims recites an abstract idea.
See MPEP 2106.
Step 2a.2 – Identifying a Practical Application
The claim does not currently recite any additional elements or combination of additional elements that integrate the judicial exception into a practical application.
For example, “restricting a spendability of the at least one offline such that the spendability in at least one further token transaction is deactivated for the secure token transaction(STU)”. According to the disclosure(¶ 19, 23, 64), “The marking may include the labeling of the offline token with any deactivation information like “collected token” or “deactivated/restricted token” but is not limited thereto. … In other words, the spendability of a token having normally an activated spendability is deactivated. Based on the deactivation of the spendability of the offline token, the offline token can only be redeemed or paid to an online account, e.g. bank account, of the user. … in a first fourth step S41, the at least one offline token is redeemed or paid only to a bank account or online account of the user. Alternatively, in a second fourth step S42, the at least one offline token is transferred in an online transaction to another secure token transaction unit ASTU. In this context, the transferred offline token remains his restricted/deactivated spendability. ” The “restricting” appears to be tied to spending limits and is interchangeable with the “deactivating”. The token is “marked”/ labeled. The limitation appears drawn to the abstract idea of placing a spending limit. This is not an additional element.
Accordingly, even in combination, these elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Mere instructions to apply the exception using generic computer components and limitations to a particular field of use or technological environment do not amount to practical applications. The claim in directed to an abstract idea.
Step 2b
The claim limitations recite “receiving token… storing … token … and restricting a spendability ….” are not additional elements and they amount to no more than mere instructions to apply the exception using a generic computer component. For the same reason these elements are not sufficient to provide an inventive concept. This is also determined to be well-understood, routine and conventional activity in the field. The Symantec, TLI, and OIP Techs, court decision cited in MPEP 2106.05(d)(II) indicates that mere receipt or transmission of data over a network is a well-understood, routine and conventional function when it is claimed in a merely generic manner, as it is here. Therefore, when considering the additional elements alone, and in combination, there is no inventive concept in the claim and thus the claim is not eligible.
Viewed as a whole, instructions/method claims recite the concept of a fundamental economic practice as performed by a generic computer. The claims do not currently recite any additional elements or combination of additional elements that amount to significantly more than the judicial exception. The elements used to perform the claimed judicial exception amount to no more than mere instructions to implement the abstract idea in a network, and/or merely uses a network as a tool to perform an abstract idea and/or generally linking the use of the judicial exception to a particular environment.
Dependent claims 2-6, 9, 11, 12, 15-18 discuss functions in more descriptive detail of the steps geared toward the abstract idea. As such, these elements do not provide the significantly more to the underlying abstract idea necessary to render the invention patentable.
Dependent claims 7, 8, 10, 14 and 19 process also geared toward the abstract idea of spending limits. As such, these elements do not provide the significantly more to the underlying abstract idea necessary to render the invention patentable.
The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Therefore, based on case law precedent, the claims are claiming subject matter similar to concepts already identified by the courts as dealing with abstract ideas. See Alice Corp. Pty. Ltd., 573 U.S. 208 (citing Bilski v. Kappos, 561, U.S. 593, 611 (2010)).
The claims at issue amount to nothing significantly more than an instruction to apply the abstract idea using some unspecified, generic computer. See Alice Corp. Pty. Ltd., 573 U.S. 208. Mere instructions to apply the exception using a generic computer component and limitations to a particular field of use or technological environment cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. 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(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Conclusion
The claim as a whole, does not amount to significantly more than the abstract idea itself. This is because the claim does not affect an improvement to another technology or technical filed; the claim does not amount to an improvement to the functioning of a computer system itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, the Examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
Dependent claims do not resolve the deficiency of independent claims and accordingly stand rejected under 35 USC 101 based on the same rationale.
Dependent claims 2-12 and 14-19 are also rejected.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim limitations with “unit” functions invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. “receiving by an offline token receiving unit”, “storing … by an offline token storage unit”, “online token receiving unit” and “online token storage unit”, “a marking and/or encryption unit”, “a limit management unit” in claims 1, 7, 8, 10, 13, and 18. The “unit” is a nonce term.
According to the disclosure(¶ 57), “The secure token transaction unit STU comprises an offline token receiving unit 101 and an offline token storage unit 102. The offline token receiving unit 101 is configured for receiving at least one offline token of an electronic token transaction system TS from at least one other secure token transaction unit ASTU of the electronic token transaction system TS…. Optionally, the secure token transaction unit STU further comprises an online token receiving unit 105. The online token receiving unit 105 is configured for receiving at least one online token of an electronic token transaction system TS of at least one other secure token transaction unit ASTU of the electronic token transaction system TS. The secure token transaction unit STU further comprises an online token storage unit 106.” The disclosure does not appear to define what the “units” are structurally and what structure performs the claimed functions.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Dependent claims 2-12 and 14-19 are also rejected.
Claim 10 recites the limitation "the online token limit", and “the mandatory value”. Claim 12 recites “the online token limit”, “t and he online token monetary value limit”, claim 15 recites “wherein the redeeming, in particular the fully redeeming”, and “the bank account” There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5, 7, 13, 16 and 17 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Maeng (US 20240104550) (“Maeng”).
Regarding claims 1 and 13, Maeng discloses receiving by an offline token receiving unit at least one offline token of an electronic token transaction system from at least one other secure token transaction unit of the electronic token transaction system (Abstract; ¶ 43, 66-68);
Maeng- the wallet management system 131 may produce and send an offline token, such as the offline token 160 shown in FIG. 1 , to the mobile wallet 110. In other examples, the financial institution 140 a produces the offline token and sends it to the wallet management system 141 that, in turn, sends the offline token to the mobile wallet 110. The offline token may be sent, for example, via the network 120. ( ¶ 43);
storing the received at least one offline token of the electronic token transaction system by an offline token storage unit; and(Abstract; ¶ 43-45, 60-63);
Maeng- The mobile wallet 110 may store the offline token at action 406… The computing system may determine that the mobile wallet application is not online and determine that the first offline toke comprises first offline token data that matches the first offline token reference data. (Abstract; ¶ 43);
in a collector mode of the secure token transaction unit, restricting a spendability of the at least one offline such that the spendability in at least one further token transaction is deactivated for the secure token transaction(STU) ( ¶ 28, 50, 60-63, 68; claim 4);
Claim Interpretation - Applicant has amended independent claim 1 and 13 to two different subject matter and the claims are subject to further restriction. Claim 1 recites “wherein in a collector mode of the secure token transaction unit, the received offline token is stored such that a spendability thereof in at least one further token transaction is deactivated for the secure token transaction unit (STU)” and claim 13 recites “in a collector mode of the secure token transaction unit, restricting a spendability of the at least one offline such that the spendability in at least one further token transaction is deactivated for the secure token transaction(STU)”. For the purpose of claim interpretation, these limitations will be treated as meaning the same. Applicant is limited to a single invention.
Maeng- If the received offline token does not match the next expected sequence number, it may indicate that the mobile wallet has malfunctioned and/or that an offline token has been stolen. Accordingly, the wallet management system may proceed to send a rejection message at action 616… Also optionally, at action 610, the wallet management system may determine if one or more payment conditions for the offline token are met…. An example payment condition is a threshold number of payments for which the offline token can be used. Another example payment condition is a geographic area in which the offline token may be used. Another example payment condition is a payment amount limitation. Another example payment condition is an expiration date for the offline token. ( ¶ 61, 62)
Regarding claim 2, Maeng discloses wherein the electronic token transaction system is an offline token transaction system of an electronic token transaction system comprising an online digital currency system and the offline token transaction system ( ¶ 43-44).
Regarding claim 3, Maeng discloses wherein the secure token transaction unit is a merchant secure token transaction unit, the merchant secure token transaction unit permanently operating in a collector mode ( ¶ 16-18, 25, 38, 44-47).
Regarding claim 4, Maeng discloses wherein the secure token transaction unit is a user secure token transaction unit, the user secure token transaction unit being operable in a collector mode and in a normal mode (Abstract; ¶ 35, 48, 54-58).
Regarding claim 5, Maeng discloses wherein the offline token storage unit comprises an offline token limit, in particular an offline token monetary value limit, and wherein the secure token transaction unit further comprises an offline token counter, in particular an offline token monetary value counter, configured for identifying if the at least one offline token, in particular the monetary value of the at least one offline token, is above, below or equals the offline token limit, in particular the offline token monetary value limit, the offline token limit being a normal mode offline token limit or a collector mode offline token limit ( ¶ 28, 62).
Regarding claims 7, 16 and 17, Maeng discloses a marking and/or encryption unit configured for marking the received at least one offline token as to have a restricted spendability and/or for encrypting the received at least one offline token as to have a restricted spendability (¶ 28, 29, 55, 62, 69).
Claim Rejections - 35 USC § 103
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 6, 8-12, 14, 15, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Maeng (US 20240104550) (“Maeng”), and further in view of Zamani et al. (US 20250190984) (“Zamani”).
Regarding claim 6, Maeng does not disclose wherein a collector mode offline token limit is at least 150% of a normal mode offline token limit. Zamani teaches wherein a collector mode offline token limit is at least 150% of a normal mode offline token limit ( ¶ 139-143, 184-187, 192). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Maeng and Zamani in order to provide spending access to funds that were received in an offline transaction (Zamani; ¶ 2-4, 49).
Regarding claims 8 and 18, Zamani teaches when the secure token transaction unit is in an online token mode, receiving by an online token receiving unit of an at least one secure online token transaction unit at least one online token; storing by an online token storage unit of the at least one secure online token transaction unit the at least one received online token of the electronic token transaction system, and spending the at least one online token in at least one token transaction (Abstract; ¶ 135, 140-143; claim 2).
Regarding claim 9, Zamani teaches wherein the online token storage unit comprises an online limit, in particular an online token monetary value limit, and wherein the secure token transaction unit further comprises an online token counter, in particular an online token monetary value counter, configured for identifying if the at least one online token, in particular the monetary value of the at least one online token, is above, below or equals the online token limit ( ¶ 32, 140-143).
Regarding claim 10, Zamani teaches a limit management unit configured for setting and/or updating the online token limit and/or offline token limit, in particular the mandatory value of the online token limit and/or the mandatory value of the offline token limit ( ¶ 139-143).
Regarding claim 11, Zamani teaches wherein the offline token limit, in particular the offline token monetary value limit, of the offline token storage unit and the online token limit, in particular the online token monetary value limit, of the online token storage unit are included in a shared token limit (Abstract; ¶ 139-143, 184-187, 192).
Regarding claim 12, Zamani teaches wherein the offline token limit, in particular the offline token monetary value limit, of the offline token storage unit and the online token limit, in particular the online token monetary value limit, of the online token storage unit are identical or are different to each other (¶ 139-142, 180-182).
Regarding claim 14, Zamani teaches redeeming the at least one offline token only to a bank account or online account of the user or transferring the at least one offline token in an online transaction to another secure token transaction unit (¶ 50-56, 84, 87, 110, 177, 178).
Regarding claim 15, Zamani teaches wherein the redeeming, in particular the fully redeeming, of the at least one offline token to the bank account or online account of the user is only executed when the at least one offline token, in particular the value of the at least one offline token, exceeds an offline token limit of the offline token receiving unit, or wherein the redeeming, in particular the partial redeeming, of the at least one offline token to a bank account or online account of the user is only executed when the at least one offline token exceeds an offline token limit of the offline token receiving unit and is only executed on the part of the at least one offline token exceeding the offline token limit (¶ 50-56, 110, 145-146).
Regarding claim 19, Zamani teaches setting and/or updating by a limit management unit the offline token limit (¶ 50-56, 109, 113).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Inabe et al., (US 20190068588) teaches offline token.
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/ILSE I IMMANUEL/Primary Examiner, Art Unit 3685