DETAILED ACTION
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 final office action in response to the amendments filed 4/16/2026.
Applicant’s amendments to Claims 1, 7, 8, 14, 15, 16, 17, 18, 19 and 20 have been received and acknowledged.
Claims 1-20 are currently pending and have been examined.
Response to Arguments
Applicant's arguments filed 4/16/2026 have been fully considered but they are not persuasive.
With regard to the rejections under 35 USC 101, Applicant argues: (1) Applicant asserts that the instant recited claims recite patent eligible subject matter because the claims are not directed to a judicial exception. Applicant disagrees with the categorization of the recited claims in the subject matter grouping of “ methods of organizing human activity.” (Applicant’s response 10-12) Applicant argues that the analysis in the previous office action ‘discounts’ “subject matter such as “ a wireless data connection, “ “ a computing device, “ and “ send[ing]” a verifiable credential and as such does not consider the claims as a whole. ( Applicant’s response, 13). (2) Noting the ‘altered claims,’ Applicant further argues that the analysis is deficient because the statements are “conclusory” and do not explain “why” the recited claims are “considered an exception.” Applicant further asserts that the abstract idea is not encompassed by the ‘ language’ that is “identified to encompass the abstract idea.” Referencing Specification [1, 8, 9], Applicant further argues that at least claim 1 improves a technical field, “…such as transaction processing…” and “…such as payment processing…” . (Applicant’s response 14-18) (3) Applicant further argues that the recited claims “…amount to significantly more than any abstract idea because the claims recite significantly more than any alleged judicial exception…”. Applicant also asserts that the recited claims “present language that is not “…well-understood, routine , conventional activity previously known to the industry…” (Applicant’s response, 19-20).
Examiner respectfully disagrees as cited in the rejection previously and below. The analysis of the rejection follows the required steps (1, 2a and 2b; See also MPEP 2106). Contrary to Applicant’s arguments the claims have not been ‘altered’; Examiner has used a short to extract the various elements of the claims to analyze according to the respective relevant steps and also considered the claims as a whole. Examiner notes that the fields of ‘transaction processing’ and “payment processing” are business challenges and an not necessarily a technological field. An improvement to a business challenge is an improvement to an abstract idea. Applicant’s assertion that the recited claim language is not “…well-understood, routine , conventional activity previously known to the industry…” seems to conflate novelty with the Step 2b elements of patent eligibility. The rejection states “…As discussed above with respect to integration of the abstract idea into a practical application, the additional element(s) of: (system, computing device, processor, memory, wireless data connection, non-transitory computer-readable medium, instructions… ) merely uses a computer as a tool to perform an abstract idea or merely add insignificant extra-solution activity to the judicial exception or merely uses generic computing elements to perform well known, routine, and conventional functions. (MPEP 2106.05 (d), (f) and (g)) (Specification, Fig. 1, [8] computing device (e.g. mobile phone, tablet, personal computer, [11] NFC or UWB connection… [13] network environment…[52] memory … both volatile and nonvolatile… [53] general purpose hardware… )…” Further the use of computers/technology recited at a high level of generality (i.e. including generic computing elements) to execute an abstract idea is ‘apply it.’ (See MPEP 2106.05 (f)). As such Applicant’s arguments are not persuasive. (Applicant’s arguments 1, 2, 3).
With regard to the rejections under 35 USC 102 and 35 USC 103, Applicant argues that the prior art of Noe does not teach the newly amended claim language and the recited ‘security handshake.’ Further Applicant asserts that Mishra does not cure the deficiencies of the Noe.
Examiner respectfully disagrees Applicant’s arguments are moot in view of the new grounds of rejection applied below. Additionally, Examiner notes that Applicant’s arguments are not commensurate with the scope of the recited claims. In other words, the Applicant’s arguments are narrower than the recited claims which must be interpreted using broadest reasonable interpretation and with context of the Specification. Applicant’s arguments are not persuasive.
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 non-statutory subject matter.
When considering subject matter eligibility under 35 U.S.C. 101, (1) 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, (2a) 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 (2b), 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. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. ____ (2014).
The claimed invention is directed to a judicial exception (i.e. a law of nature, a natural phenomenon, or an abstract idea) without significantly more. In the instant case, the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
(1) In the instant case, the claims are directed towards a method, non-transitory computer readable medium, and the system of integrating identity information into a payment instrument. In the instant case, Claims 8-14 are directed to a process. Claims 1-7 are directed to a system. Claims 15-20 is/are directed to a non-transitory computer readable medium.
(2a) Prong 1: Integrating/verifying identity information into a payment instrument is categorized in/akin to the abstract idea subject matter grouping of: methods of organizing human activity [organizing human activity (commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)]. As such, the claims include an abstract idea.
The specific limitations of the invention are (a) identified to encompass the abstract idea include:
A …., comprising: a …. comprising
…. and
…. to at least:
detect a….between the…. and a transaction card;
obtain a user consent to provision a verifiable credential representing a user identification credential onto the transaction card via a user interacting with the computing device, the verifiable credential comprising at least one or more pieces of user identity information corresponding to one or more user attributes; and;
…. the verifiable credential to an identity application installed on the transaction card over the …..
8. A method, comprising:
detecting a …. between a …. and a transaction card;
obtaining a user consent to provision a verifiable credential representing a user identification credential onto the transaction card via a user interacting with the computing device, the verifiable credential comprising at least one or more pieces of user identity information corresponding to one or more user attributes; and;
…. the verifiable credential to an identity application installed on the transaction card over the ….
15. A …., cause the computing device to at least:
detect a ….between the …. and a transaction card;
obtain a user consent to provision a verifiable credential representing a user identification credential onto the transaction card via a user interacting with the computing device, the verifiable credential comprising at least one or more pieces of user identity information corresponding to one or more user attributes; and;
…. the verifiable credential to an identity application installed on the transaction card over the …..
As stated above, this abstract idea falls into the (b) subject matter grouping of: methods of organizing human activity.
Prong 2: When considered individually and in combination, the instant claims are do not integrate the exception into a practical application because the steps of detecting… obtaining….do not apply, rely on, or use the judicial exception in a manner that that imposes a meaningful limitation on the judicial exception (i.e. the abstract idea).
The instant recited claims including additional elements (i.e. sending…) do not improve the functioning of the computer or improve another technology or technical field nor do they recite meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The limitations merely recite: “apply it” (or an equivalent) or merely include instructions to implement an abstract idea on a computer or merely uses a computer as a tool to perform an abstract idea or merely add insignificant extra-solution activity to the judicial exception or generally link the use of the judicial exception to a particular technological environment or field of use (See MPEP 2106.05 (f) and (g))
(2b) In the instant case, Claims 8-14 are directed to a process. Claims 1-7 are directed to a system. Claims 15-20 is/are directed to a non-transitory computer readable medium.
Additionally, the claims (independent and dependent) do not include additional elements that individually or in combination are sufficient to amount to significantly more than the judicial exception of abstract idea (i.e. provide an inventive concept). As discussed above with respect to integration of the abstract idea into a practical application, the additional element(s) of: (system, computing device, processor, memory, wireless data connection, non-transitory computer-readable medium, instructions… ) merely uses a computer as a tool to perform an abstract idea or merely add insignificant extra-solution activity to the judicial exception or merely uses generic computing elements to perform well known, routine, and conventional functions. (MPEP 2106.05 (d), (f) and (g)) (Specification, Fig. 1, [8] computing device (e.g. mobile phone, tablet, personal computer, [11] NFC or UWB connection… [13] network environment…[52] memory … both volatile and nonvolatile… [53] general purpose hardware… )
The dependent claims have also been examined and do not correct the deficiencies of the independent claims.
It is noted that claim (2-7, 9-14 and 16-20) introduce the additional elements of performing.. handshake.. credential …sent (Claims 2, 9 and 16); … sending…. Sending… receiving…. Determining…..(Claims 3, 10 and 17); … sending… receiving…(Claims 4, 11 and 18); wherein… request.. includes … (Claims 5, 12, 19); …presenting…obtaining…(Claims 6 and 13); wherein ..the user identification credential. (Claims 7, 14 and 20). These elements are not a practical application of the judicial exception because these limitations merely recite: “apply it” (or an equivalent) or merely include instructions to implement an abstract idea on a computer or merely uses a computer as a tool to perform an abstract idea or merely add insignificant extra-solution activity to the judicial exception or field of use (See MPEP 2106.05 (f) and (g)) Further these limitations taken alone or in combination with the abstract do not amount to significantly more than the abstract idea alone because, ).the element(s) amount(s) to mere use of a computer as a tool to perform an abstract idea or merely add insignificant extra-solution activity to the judicial exception or merely uses generic computing elements to perform well known, routine, and conventional functions. (MPEP 2106.05 (d), (f) and (g)) (Specification, Fig. 1, [8] computing device (e.g. mobile phone, tablet, personal computer, [11] NFC or UWB connection… [13] network environment…[52] memory … both volatile and nonvolatile… [53] general purpose hardware… )
Therefore, claims 1-20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-4, 6-11, 13-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0307186 A1, Noe et al. hereinafter referred to as Noe in view of US 20180032997 A1, Gordon et al. hereinafter referred to as Gordon.
Claims 1, 8 and 15
Noe discloses a method, system and non-transitory computer readable medium comprising:
detecting a wireless data connection between a computing device and a transaction card; (See at least Noe, Fig. 1 IC payment card… [40] contactless payment card… wireless… )
obtaining a user consent to provision a verifiable credential representing a user identification credential onto the transaction card via a user interacting with the computing device, the verifiable credential comprising at least one or more pieces of user identity information ….; and ; (See at least Noe, [22] user may be prompted to authenticate themselves to the device (e.g. with a PIN or biometric)….. [37] contactless payment card…. Verify cryptogram.. then consent to the provisioning of the payment credentials…secure application in the mobile device may perform card authentication….[74] …user authentication …biometric authentication… PIN …access to wallet app… [81] payment credential data… include a PAN or payment token associate with the payment account..[103] payment account number… identifies a payment system account or number carried by a payment card…Claim 24…)
sending the verifiable credential to an identity application installed on the transaction card over the wireless data connection. (See at least Noe, [37] contactless payment card…. Verify cryptogram.. then consent to the provisioning of the payment credentials….provision the payment credentials…card authentication….)
Noe does not directly disclose the following;however, Gordon teaches:
… corresponding to one or more user attributes… (See at least Gordon, [346] further location may be determined….may be utilized to present users with advertisements, content, and/or applications….User may be presented with discounts… )
Furthermore, the Supreme Court has supported in KSR International Co. Teleflex Inc. (KSR), 550US___, 82 USPQ2d 1385 (2007), that merely applying a known technique to a known method, yield predictable results, render the claimed invention obvious over such combination. In the instant case, Noe discloses a method and system for verification of contactless payment card for provisioning of payment credentials to mobile device. Gordon further teaches system, method and computer program product for determining whether to prompt an action by a platform in connection with a mobile device including user verification and associated attributes . One of ordinary skill in the art would clearly recognize that this combination would lead to a predictable result (i.e. a method and system for verification of contactless payment card for provisioning of payment credentials to mobile device e including user verification and associated attributes). As such the claimed invention is obvious over Noe/ Gordon.
Claims 2, 9 and 16
Noe and Gordon disclose the invention as claimed above in Claims 1, 8 and 15.
Noe further discloses:
performing a security handshake with the identity application; and the verifiable credential is sent to the identity application in response to a successful security handshake. (See at least Noe, [75] user authentication… user’s request… initiate an operation for provisioning payment credentials to the mobile device… [76] interrogation signal…. “handshake”…[84] Fig. 4… data transmitted …cryptogram/dynamic security code and the PAN (or other account indicator) received by the mobile device from the contactless payment card… [86] …a conventional process by which cryptograms or dynamic security codes…are verified by account issuers in connection with payment account transactions…account issuer … may verify other information received from the payment support service computer…[88] … two -factor security scheme in connection with an e-commerce purchase transaction…Claim 20…)
Claims 3, 10 and 17
Noe and Gordon disclose the invention as claimed above in Claims 2, 9 and 16.
Noe further discloses:
sending a challenge to the identity application; (See at last Noe, [82-86] pass cryptogram…)
receiving an encrypted challenge from the identity application in response; (See at last Noe, [82-86] pass cryptogram…cryptographic process
sending the encrypted challenge to an issuer service; (See at last Noe, [82-87] pass cryptogram…cryptographic process… account issuer)
receiving a decrypted version of the encrypted challenge from the issuer service; and (See at last Noe, [82-87]..account issuer… verifying the cryptogram…)
determining whether the challenge sent to the identity application matches the decrypted version of the encrypted challenge received from the issuer service. (See at last Noe, [82-87] account issuer… ID & V process…[90-92] payment credentials… match… credentials )
Claims 4, 11 and 18
Noe and Gordon disclose the invention as claimed above in Claims 1, 8 and 15.
Noe further discloses:
wherein, prior to detection of the wireless data connection, the method further comprises:
sending a request for a verifiable credential to an issuer service; and (See at last Noe, Fig. 4… send transaction data to account issuer… Fig. 5, card transmits data…)
receiving a verifiable credential from the issuer service. (See at last Noe, Fig. 4… account issuer verifiers cryptogram…. Credentials provisioning… Fig. 5, mobile receives cryptogram and account data)
Claims 6 and 13
Noe and Gordon disclose the invention as claimed above in Claims 1, 8 and 15.
Noe further discloses:
wherein the verifiable credential is one of a plurality of verifiable credentials stored on the computing device and obtaining the user consent to provision the verifiable credential representing the user onto the transaction card further comprises:
presenting within a user interface the plurality of verifiable credentials; and (See at least Noe, Fig. 4, Open wallet app… initiate credential add…[14] wallet application)
obtaining a selection through the user interface of the verifiable credential from the plurality of verifiable credentials. (See at least Noe, Fig. 4, Open wallet app…[14] entering their card details…. [74] open wallet app… types of user authentication… biometric… or entry of a PIN required…)
Claims 7, 14 and 20
Noe and Gordon disclose the invention as claimed above in Claims 1, 8 and 15.
Noe does not directly disclose the following; however, Gordon teaches
wherein the user identification credential comprises at least one of: a government issued identification, a university issued identification, or an employer issued identification. (See at least Gordon, Fig. 49-24 [619] …a condition of accepting… additional information…. (e.g. name, address, telephone, driver’s license, passport number, credit card, etc.) [814-815] identification… verification of identity… )
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, 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 5, 12 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Noe in view of Gordon further in view of US 2021/0351935 A1, Mishra et al. hereinafter referred to as Mishra.
Claims 5, 12 and 19
Noe and Gordon disclose the invention as claimed above in Claims 4, 11 and 18.
Noe does not directly disclose the following; however, Mishra teaches:
wherein the request for the verifiable credential that is sent to the issuer service includes a user decentralized identifier (DID) stored on the computing device. (See at least Mishra, [3] DID …public …private pair… [7] ….authenticating credential of a person… encrypted credential… encrypted key… relying party identifies a decentralized identifier (DID)…)
Furthermore, the Supreme Court has supported in KSR International Co. Teleflex Inc. (KSR), 550US___, 82 USPQ2d 1385 (2007), that merely applying a known technique to a known method, yield predictable results, render the claimed invention obvious over such combination. In the instant case, Noe discloses a method and system of verification of a payment credentials. Mishra is another method and system of authenticating credentials including a decentralized identifier (DID) feature. One of ordinary skill in the art would clearly recognize that this combination would lead to a predictable result (i.e. method and system of verification of a payment credentials including a DID feature). As such the claimed invention is obvious over Noe/Mishra.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
AU 2025202649 A1
US 10051103 B1
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASHA PUTTAIA H whose telephone number is (571)270-1352. The examiner can normally be reached M-F 9 am to 5:30 pm.
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/ASHA PUTTAIA H/Primary Examiner, Art Unit 3691
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