CTNF 19/002,065 CTNF 84463 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. The following is a Non-Final Office Action in response to communications received December 26, 2024. No Claim(s) have been canceled. No Claim(s) have been amended. No new claims have been added. Therefore, claim(s) 1 is pending and addressed below. Priority Application No. 19002065 filed 12/26/2024 is a Continuation of 16486393 , filed 08/15/2019, now abandoned and having 1 RCE-type filing therein 16486393 is a National Stage entry of PCT/US2018/018873 , International Filing Date: 02/21/2018 claims foreign priority to 1702795.4, filed 02/21/2017 Applicant Name/Assignee: Mastercard International Incorporated Inventor(s): Smets, Patrik; Mestre, Partick; Van De Velde, Eddy Information Disclosure Statement The IDS submitted 07/31/2025 has been reviewed and considered. Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 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. Claim(s) 1 is rejected under 35 U.S.C. § 101 because the instant application is directed to non-patentable subject matter. Specifically, the claim(s) is directed toward at least one judicial exception without reciting additional elements that amount to significantly more than the judicial exception. The rationale for this determination is in accordance with the guidelines of USPTO, applies to all statutory categories, and is explained in detail below. In reference to Claim(s) 1: STEP 1. Per Step 1 of the two-step analysis, the claims are determined to include a method, as in independent Claim 1. Such methods fall under the statutory category of "process." Therefore, the claims are directed to a statutory eligibility category. STEP 2A Prong 1. The claimed invention is directed to an abstract idea without significantly more. Method claim 1 recites method steps (1) determining if transaction device has associated mechanism for providing user verification (2) if there is an associated user verification mechanism transact to a first transaction protocol (3) if there is no associated user verification mechanism, transacting with a second transaction protocol. The claimed limitations which under its broadest reasonable interpretation, covers performance of commercial activity and risk mitigation. Furthermore, when considered as a whole the claimed subject matter is directed toward receiving, analyzing financial data in order to determine and provide credit offers. Such concepts can be found in the abstract category of commercial interactions and marketing. These concepts are enumerated in Section I of the 2019 revised patent subject matter eligibility guidance published in the federal register (84 FR 50) on January 7, 2019) is directed toward abstract category of mental processes mathematical concepts and methods of organizing human activity. The specification discloses that transactions require users to verify their identity and that users can apply various devices for performing transactions with different devices such as mobile phones, wearable devices) that have different verification processes (PIN, fingerprint) when using proximity payment system environments (page 5-7). The specification describes selecting a verification protocol mechanism that is implemented by the device being applied for the transaction. Accordingly the claimed subject matter when considered in light of the specification is directed toward applying a verification mechanism that is associated with the device being applied in the transaction process which is an abstract concept found in the sub-category of commercial interactions. This concepts is enumerated in Section I of the 2019 revised patent subject matter eligibility guidance published in the federal register (84 FR 50) on January 7, 2019) is directed toward abstract category of methods of organizing human activity. STEP 2A Prong 2: The identified judicial exception is not integrated into a practical application because the claims fail to provide indications of patent eligible subject matter that integrate the alleged abstract idea into a practical application. The additional elements recited in the claim beyond the abstract idea include a terminal of a transaction system and a transaction device. The claim limitations do not tie any additional elements to the limitation “determine if the transaction device has associated with a mechanism for providing user verification” and “transacting with the terminal “ (if the device is an associated user verification mechanism) and “transacting with the terminal according to a second transaction protocol” (if the device is not associated with a user verification mechanism). The limitations are so broad as to encompass both mental and manual activity. For example the determination step can be performed using mental activity whereas the transacting steps according to first or second transaction protocols can be performed using manual steps. (such as swiping a card, entering a pin, providing fingerprint). The claimed system terminal and device are not positively tied to the method steps claimed. Accordingly, individually the limitations do not meet the MPEP 2106.05 (a)-(c), (e )-(h). indications of patent eligibility. When considered as a combination of parts or as a whole, the method steps “determining if transaction device has associated mechanism for providing user verification … if there is an associated user verification mechanism transact to a first transaction protocol … if there is no associated user verification mechanism, transacting with a second transaction protocol” is not directed toward improving the technology of the user device or system terminal or directed toward a solution to problem rooted in the technology of the underlying computer elements. The combinations of parts is not directed toward any of the indications of patent eligible subject matter under step 2A prong 2, but instead a user verification transaction activity. MPEP guidance (see MPEP 2106.05 (a)-(c), (e )-(h). The claim limitations as a whole, as an ordered combination and the combination of steps not integrate the judicial exception into a practical application as the claim process fails to impose meaningful limits upon the abstract idea. This is because the claimed subject matter fails to provide additional elements or combination or elements that go beyond applying technology as a tool to perform the identified abstract idea. The steps recited by method claim recite the concept of a financial activity. The claim limitations and specification lacks technical disclosure on what the technical problem was and how the claimed limitations provide a technical solution to a technical problem rather than a solution to a problem found in the abstract idea. Taking the claim elements separately, or as a combination, the operation performed by the mobile device processor and communication unit at each step of the process is purely in terms of results desired and devoid of implementation of details. Technology is not integral to the process as the claimed subject matter is so high level that any generic programming could be applied and the functions could be performed by any known means. Furthermore, the claimed functions do not provide an operation that could be considered as sufficient to provide a technological implementation or application of/or improvement to this concept (i.e. integrated into a practical application). The integration of elements do not improve upon technology or improve upon computer functionality or capability in how computers carry out one of their basic functions. The integration of elements do not provide a process that allows computers to perform functions that previously could not be performed. The integration of elements do not provide a process which applies a relationship to apply a new way of using an application. The limitations do not recite a specific use machine or the transformation of an article to a different state or thing. The limitations do not provide other meaningful limits beyond generally linking the use of the abstract idea to a particular technological environment. The resource claimed performing the steps is merely a “field of use” application of technology. The instant application, therefore, still appears only to implement the abstract idea to the particular technological environments apply what generic computer functionality in the related arts. The steps are still a combination made to perform a financial activity and does not provide any of the determined indications of patent eligibility set forth in the 2019 USPTO 101 guidance. The additional steps only add to those abstract ideas using generic functions, and the claims do not show improved ways of, for example, an particular technical function for performing the abstract idea that imposes meaningful limits upon the abstract idea. Moreover, Examiner was not able to identify any specific technological processes that goes beyond merely confining the abstract idea in a particular technological environment, which, when considered in the ordered combination with the other steps, could have transformed the nature of the abstract idea previously identified. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim provides no technical details regarding how the operations performed by the “resource”. Instead, similar to the claims at issue in Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332 (Fed. Cir. 2017), “the claim language . . . provides only a result-oriented solution with insufficient detail for how a computer accomplishes it. Our law demands more.” Intellectual Ventures, 850 F.3d at 1342 (citing Elec. Power Grp. LLC v. Alstom, S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016)). The claim is directed to an abstract idea STEP 2B; The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to concepts of the abstract idea into a practical application. The additional elements recited in the claim beyond the abstract idea include a user device and transaction system terminal. Taking the claim elements separately, the method steps performed at each step of the process is purely conventional. The claim limitations do not positively tie any of the recited step to a particular technology. The limitations are so broad as to be performed by a human using manual/mental process or by the user device or the transaction system terminal. Using computer technology to “determine” a condition and then based on the condition either perform a transaction using a first or second transaction protocol ----are some of the most basic functions of a computer. In Ubicomm LLC v. Zappos IP, Inc . No. 1-13-cv-01029 (d. Del. Nov. 13, 2013), the court found that conditional actions to be abstract. Like as found in UbiComm , the determining function simply describes a conditional action that is triggered based on “if a mechanism for providing user verification has associated with a mechanism for providing user verification at the transaction device” or whether “there is no associated user verification mechanism” . According to UbiComm, citing policy considerations of Mayo , a conditional action is a basic tool used in many disciplines from medicine to economics. The court found that if conditional actions should be protected as an abstract idea because patenting conditional actions would impede innovation. Therefore, the conditional step is abstract. When the claims are taken as a whole, as an ordered combination , the combination of steps does not add “significantly more” by virtue of considering the steps as a whole, as an ordered combination. All of these computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) Absent a possible narrower construction of the terms “determining if the transaction device has associated with a mechanism for providing user verification at the transaction device…transacting according to a first transaction protocol” or “transaction with the terminal according to a second transaction protocol” “replacing” and “routing' ... are functions can be achieved by any general purpose computer without special programming"). None of these activities are used in some unconventional manner nor do any produce some unexpected result. In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, "even if a process of collecting and analyzing information is 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than abstract." SAP America, Inc. v. Invest Pic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Applicant’s claimed functions add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis modification-transmission is equally generic and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited as an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). The ordering of the steps is therefore ordinary and conventional. The analysis concludes that the claims do not provide an inventive concept because the additional elements recited in the claims do not provide significantly more than the recited judicial exception. According to 2106.05 well-understood and routine processes to perform the abstract idea is not sufficient to transform the claim into patent eligibility. As evidence the examiner provides: Specification page 3 lines 22-24 “In a second aspect, the disclosure provides a wearable device, or a system comprising a wearable device and an associated user device, adapted to carry out a method as set out above.”; Fig. 1-2; The instant application, therefore, still appears to only implement the abstract ideas to the particular technological environments using what is generic components and functions in the related arts. The claim is not patent eligible. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-12-aia AIA (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. 07-15-03-aia AIA Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US Pub No. 2017/0083915 A1 by Collinge et al (Colinge) In reference to Claim 1 : A method of operating a transaction device to perform a contactless transaction with a terminal of a transaction system, the method comprising: determining if the transaction device has associated with it a mechanism for providing user verification at the transaction device ((Collinge) in at least para 0030 wherein the prior art teaches determining whether blocking factor for payment using consent has been provided, para 0032, para 0057 wherein the prior art teaches checking if mobile application installed and running, para 0063-0064 wherein the prior art teaches detection of compliant timeframe and/or location of payment device, for consent compliance and para 0086, para 0089) and if there is an associated user verification mechanism, transacting with the terminal according to a first transaction protocol ((Collinge) in at least para 0063-0065, para 0100-0102, ), and if there is no associated user verification mechanism, transacting with the terminal according to a second transaction protocol.((Collinge) in at least para 0081, para 0085 wherein the prior art teaches in absence of prolonged CDCVM and persistent CDCVM for low value using instant CDCVM, para 0101-0102, para 0160-0161, para 0165-0166) Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pub No. 2011/0112920 Mestro et al wherein the prior artteaches determining payment protocol for mobile device payment (para 0033); KR 20150138632 A by wherein the prior art teaches determining whether first authentication process is successful and if not then executing second authentication process . Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARY M GREGG whose telephone number is (571)270-5050. The examiner can normally be reached M-F 9am-5pm. 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, Christine Behncke can be reached at 571-272-8103. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MARY M GREGG/Examiner, Art Unit 3695 Application/Control Number: 19/002,065 Page 2 Art Unit: 3695 Application/Control Number: 19/002,065 Page 3 Art Unit: 3695 Application/Control Number: 19/002,065 Page 4 Art Unit: 3695 Application/Control Number: 19/002,065 Page 5 Art Unit: 3695 Application/Control Number: 19/002,065 Page 6 Art Unit: 3695 Application/Control Number: 19/002,065 Page 7 Art Unit: 3695 Application/Control Number: 19/002,065 Page 8 Art Unit: 3695 Application/Control Number: 19/002,065 Page 9 Art Unit: 3695 Application/Control Number: 19/002,065 Page 10 Art Unit: 3695 Application/Control Number: 19/002,065 Page 11 Art Unit: 3695 Application/Control Number: 19/002,065 Page 12 Art Unit: 3695
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