DETAILED ACTION
1. 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 .
2. Status of Application and Claims
Claims 1-20 are pending.
This office action is being issued in response to the Applicant's filing(s) on 1/09/2025.
3. Claim Objections
Claim 7, 8, 17 and 18 are objected to because of the following informalities: lack of antecedent basis.
Claim 7 is dependent upon Claims 1 and 6 and recites “the further gesture data.” However, there is no earlier recitation of a further gesture data in Claims 1 and 6.
Claims 8, 17 and 18 are objected to on similar grounds.
4. Claim Interpretation
The subject matter of a properly construed claim is defined by the terms that limit its scope when given their broadest reasonable interpretation. see MPEP §2013(I)(C). Specifically, the “broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). However, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See MPEP §2111, citing In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984).
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. See MPEP §2013(I)(C).
As such, claim limitations that contain statement(s) such as “if,” “may,” “might,” “can,” and “could” are treated as containing optional language. See MPEP §2013(I)(C). As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted. See MPEP §2013(I)(C).
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. See MPEP §2111.04(II). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See MPEP §2143.03, citing Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009);
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble. See MPEP §2111.02;
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby.” See MPEP §2111.04;
Contingent limitations. See MPEP §2111.04(II);
Printed matter. See MPEP §2111.05; and
Functional language associated with a claim term. See MPEP §2181.
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following italicized, underlined and/or boldened language is interpreted as not further limiting the scope of the claimed invention.
Additionally, the following italicized, underlined and emboldened language is not necessarily an exhaustive list of claim language that is interpreted as not further limiting the scope of the claimed invention. Applicant should review all claims for additional claim interpretation issues.
Claim 1 recites a method comprising:
in response to the captured gesture of the one or more captured gestures not matching a predefined gesture of the one or more predefined gestures stored in the memory of the payment instrument, incrementing, with the processor of the payment instrument, a counter.
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent is not met. See MPEP §2111.04(II).
Usage of the term and/or phrase “in response to the captured gesture of the one or more captured gestures not matching a predefined gesture” in Claim 1 suggests that there remains the possibility that the contingent limitations are not performed as the condition(s) precedent is not met (i.e., the captured gestures match a predefined gesture.” Therefore, the claim limitations based upon the condition are optional claim limitations. As a matter of linguistic precision, optional claim limitations do not narrow the scope of the invention, since they can always be omitted. See MPEP §2111.04(II).
As the Applicant does not address what happens should the optional claim limitation(s) fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
Claim 6 recites a method wherein the sensor includes at least one of the following sensors: an accelerometer, a gyroscope, a magnetometer, a pressure sensor, an altimeter, or any combination thereof.
The Courts have stated that where claim limitations recite a series of alternative limitations, the prior art need only disclose one of the alternatives to anticipate. See MPEP §2131, citing Brown v. 3M, 60 USPQ2d 1375, 1377-78 (Fed. Cir. 2001). As such, prior art utilized to reject one alternative limitation would also reject all other alternative limitations, regardless of whether the prior art addressed the other alternative limitations.
Therefore, further claim limitations that depended upon the alternative limitations rejected (i.e., 7 and 8), although not addressed by the prior art would also be rejected, as the basis of their dependency was rejected. Such dependent claims would thereby be rejected by prior art that failed to address their actual substance. Those dependent claims would essentially “drop out.”
Claims 16-18 have similar issues.
5. 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 is directed to an abstract idea without significantly more.
STEP 1
The claimed invention falls within one of the four statutory categories of invention (i.e., process, machine, manufacture and composition of matter). See MPEP §2106.03.
STEP 2A – PRONG ONE
The claim(s) recite(s) a method and a system to perform a method comprising: ***.
storing … gesture data associated with one or more predefined gestures;
…
capturing … further gesture data associated with one or more gestures made by a user with the payment instrument …
comparing … the further gesture data associated with the one or more captured gestures to the gesture data associated with the one or more predefined gestures stored … to determine whether a captured gesture of the one or more captured gestures matches at least one of the one or more predefined gestures;
in response to the captured gesture of the one or more captured gestures not matching a predefined gesture of the one or more predefined gestures stored … incrementing … a counter; and
controlling … based on a current count of the counter, a visual output … to provide a visual output to the user.
These limitations, as drafted, under its broadest interpretation, covers a series of steps that can be practically performed in the human mind (e.g., observations, evaluations, judgments and opinions) which are mental process, a second enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(III).
Examiner notes that “’collecting information, analyzing it, and displaying certain results of the collection and analysis,’ where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind” is a court-provided example of a mental process. See MPEP §2106.04(a)(2)(III)(A) citing Electric Power Group v. Alstom, SA. (Fed. Cir. 2016).
Accordingly, the claimed invention recites an abstract idea.
STEP 2A – PRONG TWO
The claimed invention recites additional elements (i.e., computer elements) of a memory (Claim(s) 1 and 11), a contactless chip (Claim(s) 1 and 11), a sensor (Claim(s) 1 and 11), a near-field communication protocol (Claim(s) 1), an access device (Claim(s) 1), an operating field (Claim(s) 1), a processor (Claim(s) 1), and a visual output component (Claim(s) 1).
The claimed invention does not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field; improvements to the functioning of the computer itself; are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; are not applying the judicial exception with or by use of a particular machine; are not effecting a transformation or reduction of a particular article to a different state or thing; and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §2106.04(d).
The additional elements are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. See MPEP §2106.05(f). Alternately, the additional elements amount to no more than generally linking the exception to a particular technological environment or field of use. See MPEP §2106.05(h). Accordingly, these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claimed invention is directed to an abstract idea without a practical application.
STEP 2B
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to (i) adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, (ii) adding insignificant extra-solution activity to the judicial exception, and/or (iii) generally linking the use of judicial exception to a particular technological environment or field of use. See MPEP §2106.07(a)(II). The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
DEPENDENT CLAIMS
Dependent Claim(s) 2-10 and 12-20 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 1 and 11. As such, the dependent claims are also grouped an abstract idea utilizing the same rationale as previously asserted against the independent claims.
Dependent Claim(s) recite additional elements (i.e., computer elements) of an external device (Claim(s) 5 and 15), an accelerometer, a gyroscope, a magnetometer, a pressure sensor (touch receptive area), an altimeter (Claim(s) 6 and 16) and a light emitting diode (Claim(s) 10 and 20).
In each case, the additional element(s) are recited at a high level of generality such that these additional element(s) amount to no more than mere instructions to apply the exception using a generic computer component.
The dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the judicial exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination utilizing the same rationale as previously asserted against the independent claims.
Accordingly, the dependent claim(s) are also not patent eligible.
Appropriate correction is requested.
7. 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-4, 6, 9-14, 16 and 18-19, such is/are rejected under 35 U.S.C. 103 as being unpatentable over Chin (US PG Pub. 2011/0282785) in view of Wurmfield (US PG Pub. 2019/0287083).
Regarding Claim 1, Chin discloses a method comprising:
storing, with a memory of a payment instrument (mobile electronic device or target device), gesture data (user-defined payment gesture) associated with one or more predefined gestures. (see abstract; para. 29);
detecting, with a contactless chip (NFC module) of the payment instrument, an operating field of an access device (initiator device). (see para. 45);
establishing, with the contactless chip (NCF module) of the payment instrument, a communication with the access device (initiator device) through a near-field communication protocol. (see para. 45);
capturing, with a sensor of the payment instrument (touch receptive area of a target device), further gesture data (applied gesture) associated with one or more gestures made by a user with the payment instrument. (see abstract);
comparing, with a processor of the payment instrument, the further gesture data associated with the one or more captured gestures to the gesture data associated with the one or more predefined gestures stored in the memory of the payment instrument to determine whether a captured gesture of the one or more captured gestures matches at least one of the one or more predefined gestures. (see abstract);
in response to the captured gesture of the one or more captured gestures not matching a predefined gesture of the one or more predefined gestures stored in the memory of the payment instrument (failed attempts), incrementing, with the processor of the payment instrument, a counter (to track the number of attempts). (see para. 59); and
controlling, with the processor of the payment instrument, based on a current count of the counter, a visual output component of the payment instrument to provide a visual output (a prompt) to the user. (see para. 59).
Chin does not explicitly teach a method wherein the gesture is made within the operating field of the access device.
Wurmfield discloses a method comprising capturing, with a sensor of the payment instrument (payer transaction device), further gesture data (spatial gesture) associated with one or more gestures made by a user with the payment instrument (payer instrument) in the operating field of the access device (within the field of the payee transaction device). (see para. 83).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Chin to incorporate the comparison of gestures performed within the field of the access device, as disclosed by Wurmfield, thereby ensuring that the two devices, the payment instrument and access device, were within an acceptable proximity to one another.
Regarding Claim 2, Chin discloses a method comprising storing, with the memory of the payment instrument (mobile electronic device or target device), a failed attempts state (failed attempts), wherein the failed attempts state is determined based on the current count of the counter and a predetermined threshold count stored in the memory of the payment instrument. (see para. 59).
Chin does not teach a method comprising transmitting, with the contactless chip of the payment instrument, the failed attempts state to the access device through the established near-field communication protocol, wherein receiving the failed attempts state causes the access device to provide a message associated with the failed attempts state to the user.
Wurmfield discloses a method comprising transmitting, with the contactless chip of the payment instrument (payor device), the failed attempts state (data indicative of inadequate gesture data) to the access device (payee computing device or payee transaction device) through the established near-field communication protocol, wherein receiving the failed attempts state causes the access device to provide a message associated with the failed attempts state to the user (so the corresponding device may notify the user). (see para. 31 and 66).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Chin and Wurmfield to incorporate transmission of the failed attempts state, as disclosed by Wurmfield, thereby ensuring that all parties to the payment transaction were aware of the status of the payment transaction.
Regarding Claim 3, such claim(s) recite substantially similar limitations as claimed in previously rejected Claim 2 and, therefore, would have been obvious based upon previously rejected claim(s).
Regarding Claim 4, Chin discloses a method wherein the processor of the payment instrument further controls the visual output component of the payment instrument to provide the visual output (a prompt) to the user based on the gesture enablement state. (see para. 59).
Regarding Claim 6, Chin discloses a method wherein the sensor includes at least one of the following sensors: an accelerometer, a gyroscope, a magnetometer, a pressure sensor (touch receptive area), an altimeter, or any combination thereof. (see abstract).
Regarding Claim 9, Chin discloses a method comprising transmitting, with the contactless chip of the payment instrument, to the access device, an authentication status associated with the user, wherein the authentication status is determined based on whether the captured gesture of the one or more captured gestures matches the at least one of the one or more predefined gestures. (see abstract; para. 59).
Regarding Claim 10, Chin discloses a method wherein the visual output component includes a multicolor light emitting diode (LED). (see para. 43).
Regarding Claims 11-14, 16 and 18-19, such claim(s) recite substantially similar limitations as claimed in previously rejected claim(s) and, therefore, would have been obvious based upon previously rejected claim(s).
Claim(s) 5 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chin and Wurmfield, as applied to Claims 1 and 11 above, and further in view of Noe (US PG Pub. 2021/0004806).
Regarding Claim 5, Chin discloses a method comprising:
establishing, with the contactless chip of the payment instrument, another communication with a third-party application executing on an external device (remote computer server or other devices paired with the initiator device) through the near-field communication protocol. (see para. 14-15 and 70);
receiving, with the contactless chip of the payment instrument (target device), from the third-party application executing on the external device (remote computer server), a command (signal) to instruct the payment device (target device). (see para. 15 and 56); and
in response to receiving the command (signal), de-activating or de-authorizing, with the processor of the payment instrument, the payment instrument. (see para. 56).
Chin does not teach a method wherein the command is a command to reset the current count of the counter.
Noe discloses a method comprising:
receiving, with the contactless chip of the payment instrument (mobile device or transaction device), from the third-party application executing on the external device (external to the mobile device), a command to reset the current count of the counter. (see para. 17); and
in response to receiving the command, resetting, with the processor of the payment instrument (mobile device or transaction device), the current count of the counter. (see para. 17).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Chin and Wurmfield to incorporate resetting of counters, as disclosed by Noe, thereby incorporating a layer of security to resetting the counter provided by an external device.
Regarding Claim 15, such claim(s) recite substantially similar limitations as claimed in previously rejected claim(s) and, therefore, would have been obvious based upon previously rejected claim(s).
Claim(s) 7, 8, 17 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chin and Wurmfield, as applied to Claims 6 and 16 above, and further in view of Tily (US PG Pub. 2023/0214470).
Regarding Claim 7, Chin does not teach a method wherein the sensor includes the accelerometer, and wherein the accelerometer captures a tilting motion and an orientation of the payment instrument in the operating field of the access device as the further gesture data associated with the one or more gestures made by the user with the payment instrument in the operating field of the access device.
Tily discloses a method wherein the sensor includes the accelerometer, and wherein the accelerometer captures a tilting motion (angular motion, angular values and axial rotation) and an orientation of the payment instrument (wearable device) in the operating field of the access. (see para. 71-73 and 101).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Chin and Wurmfield to incorporate an accelerometer to capture data pertaining to the gesture, as disclosed by Tily, thereby obtaining more detailed data by which to assess the captured gestures.
Regarding Claim 8, Chin does not teach a method wherein the sensor includes the gyroscope, and wherein the gyroscope captures a rotation of the payment instrument made by the user with the payment instrument in the operating field of the access device as the further gesture data associated with the one or more gestures made by the user with the payment instrument in the operating field of the access device.
Tily discloses a method wherein the sensor includes the gyroscope, and wherein the gyroscope captures a rotation (detecting rotation) of the payment instrument (wearable device) made by the user with the payment instrument in the operating field of the access device. (see para. 71-73 and 101).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Chin, Wurmfield and Tily to incorporate an gyrometer to capture data pertaining to the gesture, as disclosed by Tily, thereby obtaining more detailed data by which to assess the captured gestures.
Regarding Claims 17 and 18, such claim(s) recite substantially similar limitations as claimed in previously rejected claim(s) and, therefore, would have been obvious based upon previously rejected claim(s).
8. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON M. BORLINGHAUS whose telephone number is (571)272-6924. The examiner can normally be reached M-F 9-5.
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 attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RYAN D. 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.
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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 March 4, 2026