Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Status
Claims 1-20 are currently pending and are presented for examination on the merits.
Priority
Applicant's claim for priority to US patent application 13/353,250, filed January, 18, 2012 (and progeny), under 35 U.S.C. 120 is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 6/10/2026, 11/04/2025, and 3/03/2025 were filed 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 use of trademarks has been noted in this application (e.g., pg 1, ln 21). They should be capitalized in all caps wherever they appear (or include a proper trademark symbol) and may be accompanied by the generic ownership terminology. Although the use of trademarks is permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as trademarks. MPEP 608.01(v).
Drawings
The drawings are objected to for the following reasons:
Each sheet must include a top margin of at least 2.5 cm. (1 inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch). Please confirm that all margins are in compliance.
The drawings are objected to because the labels, external to objects and boxes, are shown without leader lines, and labels, internal to objects and boxes, are shown without underlining (see, e.g. FIG. 11). 37 CFR 1.84(q). Moreover, remove underlining from labels outside of boxes (e.g., 100, etc.), so as to reduce confusion.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
In general, please remove line numbering from the claim set, so as to facilitate office action preparation.
Claim 1 is objected to, because it is unclear how the initial request for encrypted card data received by the second device, causes it to initiate an application for receiving (rather than sending) the data.
Rejections
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, e.g., the 2019 PEG, October update. More particularly, 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, MPEP § 2106; 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.
Under MPEP § 2106, Step 1, the claimed invention, taking the broadest reasonable interpretation, recites a process (i.e., a method), machine (e.g., a device, a system, etc.), article of manufacture (e.g., a non-transitory computer readable medium) or composition of matter, and as such, is patent eligible.
Under MPEP § 2106, Step 2a-prong 1, Claims 1-20 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). The invention includes conducting a transaction, which is a fundamental economic principle. More particularly, the entirety of the method steps is directed towards conducting a transaction using two paired devices, encrypting card data, and securing communication between devices. These were long-standing commercial practices previously performed by humans (e.g., payment platforms, communication protocols, etc.) manually and via generic computing, at the time of conception. As such, the inventions include an abstract idea under § 2106, and Alice Corporation.
Under step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., the structure—first and second devices, determining a modality by which the data was received, determining the capabilities of the second device, decrypting based thereupon, etc. ) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)) and/or generally 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). That is to say, the claims are not directed to a new software or computer, but rather employs pre-existing software to do what’s been previously done, albeit less efficiently or slower. “[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 either further delineate the abstract idea, add further abstract idea(s), adds insignificant extra-solution activity, or further instruct the artisan to apply it (the abstract idea(s)) 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 structure 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). Moreover, merely reciting steps that can be performed in the human mind is not patent eligible (see, e.g., Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (Fed. Cir. 2011) (collecting and comparing data are mental steps); Braemar Mfg. LLC v. ScottCare Corp., 816 F. App’x 465, 470 (“Claims that “merely collect, classify, or otherwise filter data” are ineligible for patent under § 101.”); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-72 (Fed. Cir. 2011) (comparing a collected list of credit card numbers to transactions to identify different cards and user names used from the same IP address to detect fraud can be performed entirely in the human mind including the logical reasoning.)) “The requirements that the machine learning model be “iteratively trained’ or dynamically adjusted in Machine Learning Training patents do[es] not represent a technological improvement.” Recentive Analytics, 134 F 4th at 1212. Claim language reciting the machine learning model at a high level of generality without any specificity of how the machine learning model is trained or processes the data. The machine learning model is merely used as a tool to implement the abstract idea. Id. at 1213 (claims recite ineligible subject matter where “the only thing the claims disclose about the use of machine learning is that machine learning is used in a new environment”).
Lastly, 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 1-4, 8, 10, 15-18, and 20 are rejected under 35 USC § 102(a)(1) as being anticipated by US 2012/0221464 to Pasquero et al.
With respect to Claim 1, 8, and 15, Pas teaches a system comprising one or more processors, and non-transitory computer-readable media storing instructions; a method (FIGS. 1, 2, 4-6), a first device for enhancing secure communications between devices (Title; [0027]), the first device comprising: one or more processors (FIG. 7); and non-transitory computer-readable media storing instructions (FIG. 7, RAM, Flash Memory, etc.) that, when executed by the one or more processors, cause the first device to perform operations comprising: initializing a transaction at the first device ([0021], initiating a transaction); sending, via a paired connection between the first device and a second device ([0011]), a request for encrypted card data configured to be utilized to complete the transaction ([0010];[0012];[0027]), the request causing the second device to initiate an application for receiving the encrypted card data ([0021];[0039], mobile application); receiving, via the paired connection and from the second device, the encrypted card data responsive to the request ([0027-28]); determining capabilities of the second device, the capabilities indicating modalities for receiving card data at the second device ([0017-18]); determining a modality by which the card data was received ([0017-18]); determining that the modality is one of the modalities indicated by the capabilities of the second device ([0017-18], NFC, BLUETOOTH, etc); decrypting the encrypted card data such that decrypted card data is generated, the decrypting based at least in part on the modality being one of the modalities; and processing the transaction utilizing the decrypted card data ([0027]).
With respect to Claims 2, and 16, Pas teaches wherein: the modality by which the card data was received at the second device is a card swipe; and the capabilities of the second device include hardware for receiving the card swipe. ([0018];[0020])
With respect to Claims 3, and 17, Pas teaches wherein: the modality by which the card data was received at the second device is a card tap; and the capabilities of the second device include hardware for receiving the card tap. ([0018];[0020])
With respect to Claims 4, and 18, Pas teaches wherein: the modality by which the card data was received at the second device includes provision of a signature on a touchscreen of the second device; and the capabilities of the second device include a touchscreen for receiving the signature. ([0044], touchpad; [0027])
With respect to Claims 10, and 20, Pas teaches receiving, from the second device, an indication that capabilities of the first device have been verified by the second device, wherein decrypting the encrypted card data is based at least in part on receiving the indication that the capabilities of the first device have been verified by the second device. ([0022], authorizes devices capabilities to perform the desired transaction)
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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
a. Determining the scope and contents of the prior art.
b. Ascertaining the differences between the prior art and the claims at issue.
c. Resolving the level of ordinary skill in the pertinent art.
d. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 5-7, 9, 12-14, and 19 are rejected under § 103, as being unpatentable over Pasquero, in view of US 2004/0124966 to Forrest.
With respect to Claim 5, and 14, Pas fails to expressly teach, but Forrest teaches selecting the second device for sending the request to based at least in part on parsing a database of the first device for a private key associated with the second device, and wherein sending the request for the encrypted card data to the second device is based at least in part on the database including the private key of the second device. ([0055];[0040-41]) Forrest discusses security problems being “particularly acute” where the mobile device is used by a consumer and there is a need to provide further security ([0002-03]). As such, it would have been obvious to one of ordinary skill in the art to modify Pas, to include consideration of private keys as recited and taught in Forrest, in order to provide further security.
With respect to Claims 6, and 12, Pas fails to expressly teach, but Forrest teaches receiving additional encrypted card data from a third device ([0055], security module 20; FIG. 1, control center; [0008];[0036]); determining that the third device lacks a capability to generate the additional encrypted card data; removing the additional encrypted card data from the first device; and preventing subsequent processing of data from the third device as an untrusted device ([0034], if not authorized then would lack capability to communicate and be prevented from subsequent processing, etc.; [0058]). Under the same rationale as Claim 1, it would have been obvious to one of ordinary skill in the art to modify Pas to include this limitation taught by Forrest.
With respect to Claim 7, and 13, Pas fails to expressly teach, but Forrest teaches determining that the first device and the second device have established a secure communication channel through a trusted server ([0055], security module); and determining that the encrypted card data was received via the trusted server, and wherein decrypting the encrypted card data is based at least in part on the encrypted card data being received via the trusted server. ([0008];[0036];[0058]) Under the same rationale as Claim 1, it would have been obvious to one of ordinary skill in the art to modify Pas to include this limitation taught by Forrest.
With respect to Claims 9, and 19, Pas fails to expressly teach, but Forrest teaches determining that a database of the first device includes a first certificate associated with the second device; and determining that a second certificate associated with the first device has been sent to the second device, and wherein decrypting the encrypted card data is based at least in part on the first certificate and the second certificate. [0041] Under the same rationale as Claim 1, it would have been obvious to one of ordinary skill in the art to modify Pas to include this limitation taught by Forrest.
Claim 11 is rejected under § 103, as being unpatentable over Pasquero, in view of US 2013/0111555 to Leneel.
With respect to Claim 11, Pas fails to expressly teach, but Leneel teaches based at least in part on receiving a selection of the second device for pairing, sending a request to the second device to confirm that the first device and the second device are to be paired; receiving, in response to the request, a pairing code as displayed on the second device as input to a user interface field of the first device; and pairing the first device to the second device based at least in part on receiving the pairing code, wherein sending the request for the encrypted card data is based at least in part on pairing the first device to the second device. ([0011];[0023];[0032-34]) Leneel discusses the “need for security . . . to prevent unauthorized users from conducting fraudulent transaction . . .” ([0001-02]) It would have been obvious to one of ordinary skill in the art to modify Pas to include the use of pairing codes as recited and taught by Leneel.
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
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