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 .
Claim Status
Claims 1-20 are currently pending and are presented for examination on the merits.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 12/23/2024 before the filing of a first office action on the merits. As such, the submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Objections
Specification
The abstract of the disclosure is objected to for use of the term “may.” The term “may” implies that the disclosure may or may not include the specified structure, method step, or be otherwise configured as basically described, when such is not the case. A brief narrative of the disclosure as a whole is required. See MPEP § 608.01(b).
Double Patenting
Claim 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,211,050. Although the claims at issue are not identical, they are not patentably distinct from each other because the broader instant claims recite the same limitations contained in the narrower claims of the parent applications. For example, the instant independent method and non-transitory computer-readable medium claims are anticipated by the independent method and non-transitory computer-readable medium of the ‘050 patent; and claim 9 in both references are identical in scope, etc. As such, the instant claims are obvious in light of the parent claims.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In reLongi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Omum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(1)(1) - 706.02(1)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/ AIA / 26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
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 they recite non-patentable subject matter under § MPEP 2106 (the 2019 PEG, October update). The claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, 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. 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), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Broad categories of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulas. See, generally Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
The Claims recite a method, and non-transitory computer-readable medium, which are recognized, under Step 1, as patent eligible subject matter.
Under the 2019 PEG, step 2a-prong 1, Claims 1-20 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle) and methods performable via mental processing. More particularly, the entirety of the method steps are directed towards generating alerts to data breach in a payment card context, to using early warning devices (e.g., canaries) to detect account/card data breaches, and spoofing to detect criminal activity. These are a long-standing commercial practice previously performed by humans (e.g., merchants, credit card issuers, banks, fraud detection departments, etc.) manually and via mental steps. That is to say, banks have long monitored card transactions for fraudulent activity; and law enforcement has long used decoys to bait criminals and/or detect criminal activity. As such, the inventions include an abstract idea under the 2019 PEG, and Alice Corporation.
Under step 2a-prong 2, the claims fail to recite a practical application of the exception, because the additional limitations (e.g., the structure—a memory, processors) generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)) and/or instruct an artisan to apply it (the method) across generic computing technology. A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. See Alice, 573 U.S. at 222; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). The processor in the method steps is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that the claims recite generic computing technology. “[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citations omitted). More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (§ 2106.05(e)).
Under part 2b, the additional elements offered by the dependent claims (e.g., an electronic representative, mobile electronic device, computer processor, etc.) either further delineate the abstract idea, recite insignificant extra-solution activity, or instruct the artisan to apply it (the abstract idea) across generic computing technology. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because no one claim effects an improvement to another technology or technical field, an improvement to the functioning of a computer itself, or move beyond a general link of the use of the abstract idea to a particular technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Under Alice, merely applying or executing the abstract idea on one or more generic computer system (e.g., a computer system comprising a generic database; a generic element (NIC) for providing website access, etc.; a generic element for receiving user input; and a generic display on the computer, in any of their forms) to carry out the abstract idea more efficiently fails to cure patent ineligibility. See, e.g., Content Extraction, 776 F.3d at 1347 (claims reciting a “scanner” are nevertheless directed to an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea).
Courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data, MPEP 2106.05(d), wherein the italicized tasks are particularly germane to the instant invention.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1-8, and 10-20 are rejected under 35 U.S.C. §102(a)(1) as being anticipated by US 2019/0065784 to Margalit et al. (“Marg”)
With respect to Claim 1, Marg teaches a method for discovering fraudulent transactions in real time, the method comprising: issuing, to an organization, (i) an identifier that is representative of a canary payment card and that cannot be used to process transactions (FIGS. 2, 3; [0042], “may be valid” teaches that it may not be valid), and (ii) a plurality of identifiers that are representative of a plurality of valid payment cards and that can be used to process transactions ([0042]); listening, on a payment network via which the plurality of valid payment cards are issued, for a request to process a transaction that originates at a card processing device and that involves the identifier that is representative of the canary payment card ([0046]); and in response to discovering the request to process the transaction that indicates an attempted use of the identifier that is representative of the canary payment card, causing the request to be declined at the card processing device, such that the transaction cannot be completed ([0054];[0058], “attempted to use”;[0031], “not authorized to be used”); and alerting the organization of the attempted use of the identifier that is representative of the canary payment card (FIGS. 2,3; [0058]).
With respect to Claim 2, Marg teaches wherein the identifier is not distinguishable from the plurality of identifiers by the organization ([0028], decoy; [0029], mimic).
With respect to Claim 3, Marg teaches wherein the identifier and the plurality of identifiers are issued to the organization via the payment network using one or more application programming interface (API) calls. [0068];[0076-78]
With respect to Claim 4, Marg teaches wherein said issuing, said listening, said causing, and said alerting are performed by a networked system of a service provider that is responsible for facilitating processing of payments made using the plurality of valid payment cards ([0028], “credit card company”) and wherein said listening is accomplished using one or more application programming interface (API) calls ([0052]) that are exchanged between a layer of the networked system that resides on the payment network and an external card gateway. [0014], gateway; [0025];[0028];[0051], describing a third party service;[0068];[0076-78]
With respect to Claim 5, Marg teaches wherein said issuing, said listening, said causing, and said alerting are performed by a networked system of a service provider that is responsible for facilitating processing of payments made using the plurality of valid payment cards ([0028], “credit card company”), and wherein said causing comprises: declining the request via one or more application programming interface (API) calls exchanged between the networked system and an external card gateway. [0014], gateway; [0025];[0028];[0068];[0076-78]
With respect to Claim 6, Marg teaches receiving input that is indicative of a request, from the organization, to generate the identifier that is representative of the canary payment card; and generating the identifier that is representative of the canary payment card. ([0051-52], “request”)
With respect to Claim 7, Marg teaches marking the identifier as a burned identifier with the organization and a service provider that is responsible for facilitating processing of payments made using the plurality of valid payment cards. ([0031], decoy not authorized to be used teaches a “burned identifier”; “compromised” equals burned, used throughout.)
With respect to Claim 8, Marg teaches generating a second identifier that is representative of a second canary payment card and that cannot be used to process transactions; and notifying the organization of the second identifier. ([0031])
With respect to Claim 10, Marg teaches a non-transitory medium with instructions stored thereon that, when executed by a processor of a computing device (FIGS. 1, 4-6; [0014]), cause the computing device to: receive input that is indicative of a request, from an organization, to generate an identifier that is representative of a canary payment card and that cannot be used be used to process transactions ([0051], receive a “request”); generate the identifier that is representative of the canary payment card ([0046]); populate, into a data structure ([0046], database is a data structure), (i) the identifier that is representative of the canary payment card, and (ii) a plurality of identifiers that are representative of a plurality of valid payment cards and that can be used to process transactions (FIGS. 2,3; [0042]); and issue the data structure to the organization via a network ([0037]), such that the identifier is not distinguishable from the plurality of identifiers except by the organization (“decoy”), such that the organization does not provide the identifier to an employee for valid transaction processing ([0022], teaching organization doesn’t know; [0029]).
With respect to Claim 11, Marg teaches wherein the request designates the plurality of valid payment cards and an account balance for use with the plurality of valid payment cards. ([0045], “account details” teaches an account balance)
With respect to Claim 12, Marg teaches wherein the request further designates a number of canary payment cards to be generated. ([0052], clicking on button designates a number of marked account)
With respect to Claim 13, Marg teaches wherein the instructions further cause the computing device to: receive second input that is indicative of a designation of a communication address, a communication identifier, a communication channel, an individual, or another computing device to receive an alert when the identifier of the canary payment card is used. ([0046])
With respect to Claim 14, Marg teaches wherein the instructions further cause the computing device to: receive second input that is indicative of a designation of transaction data to include an alert that is generated when the identifier of the canary payment card is used. ([0046])
With respect to Claim 15, Marg teaches wherein the transaction data includes L2 or L31 card data that is detected during a transaction based on input by a merchant to which the identifier of the canary payment card is presented for payment. ([0025-26], teaching L2 or L3 data associated with the marked accounts)
With respect to Claim 16, Marg teaches wherein the instructions further cause the computing device to: receive second input that is indicative of a designation of contextual data to include an alert that is generated when the identifier of the canary payment card is used. [0028]
With respect to Claim 17, Marg teaches wherein the contextual data includes information entered by an individual for a transaction for which the identifier of the canary payment card is presented, a location or a name of a merchant to which the identifier of the canary payment card is presented, or a communication with the merchant. [0028]
With respect to Claim 18, Marg teaches wherein the identifier is generated without a usable balance or credit and is not linked to an available balance underwritten for the organization. [0029]
With respect to Claim 19, Marg teaches wherein the instructions further cause the computing device to: detect use of the identifier in a transaction when a point-of-sale computing device ([0026]) attempts processing of a transaction processing request over the network ([0037]); and decline processing of the transaction processing request to prevent processing of the transaction ([0054]).
With respect to Claim 20, Marg teaches wherein the instructions further cause the computing device to: generate an alert regarding the use of the identifier in the transaction; and transmit, to the organization, the alert with additional information related to a context of the use, ([0028]) so as to allow the organization to limit further fraudulent activity ([0055]).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 9 is rejected under § 103 as being unpatentable over Margalit in view of US 2015/0269562 to Wang.
With respect to Claims 9, Marg fails to expressly teach responsive to the outputting of the real-time alert, implementing a freeze on an account associated with the alphanumeric card identifier or another card identifier of the organization. Wang, however, teaches notifying an account holder and freezing the account, where fraud is detected. [0008] Wang further discusses concerns involving hacking of stolen credit card accounts, such that the prior art is still vulnerable to a centralized secure database attack fraud. [0003] It would have been obvious to one of ordinary skill in the art to modify Margalit to include freezing the account, so as to counteract centralized secure database attack fraud.
Other prior art considered germane to the instant claims, but not relied upon are listed in the Notice of references (Form 892), including US 2016/0110709 to Lacoss-Arnold.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J JACOB whose telephone number is (571)270-3082. The examiner can normally be reached on M-F 8:00-5:00, alternating Fri. off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart can be reached on 5712723955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM J JACOB/Examiner, Art Unit 3696
1 See Specification, ¶ [0020] for a list of examples
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