DETAILED ACTION
Status of Claims
This Office Action is in response to claims filed on 08/20/2026.
Claims 1, 3-9 and 11-17 are pending and are examined hereon while claims 2 and 10 are cancelled.
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 .
Allowable Subject Matter
The present invention is directed to processing transaction authorization request messages that include digitally signed transaction type indicators and tokens as substitutes for primary account numbers (PANs) for accounts in which the digitally signed transaction type indicators are verified before modifying the transaction authorization request messages to include indications of the verified signatures and/or confirmations of types of the transactions before providing the modifying transaction authorization request messages to issuers of the PANs for approval of the transactions. If the rejection rendered hereon are properly overcome, the claims may become patentable as the prior art made of record alone or in combination do not disclose confirming, by the token service provider computing device, the signed transaction type indicator is consistent with an indicator of a type of transaction included in the authorization request by a merchant involved in the transaction; and based on the verified signature and the confirmation of the type of the transaction: modifying, by the token service provider computing device, the authorization request to include the PAN in a first data element of the authorization request and an indicator of the verified signature and/or the confirmation of the type of the transaction in a second data element of the authorization request.
Yet even if the missing claimed elements were found in a reasonable number of references, a person of ordinary skill in the art at the time the invention was made would not have been motivated to combine the above missing elements.
Response to Arguments
With respect to rejection of claims under 35 U.S.C. 101, Applicant is of the opinion that the claims are patent eligible because the pending claims are directed to a specific technical solution to a technical problem, which is integrated into a specific network by defining a specific, concrete enhancement to enrich the data available in the authorization request used to assess the transaction in the existing network.
Applicant states that the claims cannot be directed to an abstract idea, when the claims are directed to efficient communication of data, which "can be a non-abstract computer-functionality improvement if done by a specific technique that departs from earlier approaches to solve a specific computer problem." See, Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1304-05 (Fed. Cir. 2018). In connection therewith, the claims specifically identify how that functionality improvement is effectuated in an assertedly unexpected way: the embedding of the type of transaction directly in the authorization request, and specifically, in the cryptogram, as data. See, Ancora Techs. v. HTC Am., Inc., 908 F.3d 1343, 1348-49 (Fed. Cir. 2018). This addresses the technical problem of limited data from the merchant, where advanced data is included, but without altering the standard associated with the communication of the data. This is therefore a technical improvement to network functionality, and not an abstract idea.
Further, Applicant states that the pending claims integrate the alleged abstract idea into a practical application, or recite significantly more that the alleged abstract idea and the claims recite a practical application of the specific token through the token service provider, and further as part of a payment network, situated to communicate between the merchant and the issuer. In doing so, the conventional data included in the authorization request is enhanced in a meaningful way. As explained in the application, conventional transaction type information in the authorization message is limited. The pending claims leverage data elements of the authorization requests to contain additional information, i.e., the indicator of the verified signature and/or the confirmation of the type of the transaction, as amended, to deliver additional information about the type of transaction to the issuer. This is a creative, technical solution to a technical problem imposed by limited standards and limitations of the payment network. In doing so, the pending claims go beyond generally linking the use of the judicial exception to a particular technological environment, such that each of the claims, as a whole, is more than a drafting effort designed to monopolize the exception. See, MPEP § 2106.04(d); see also MPEP § 2106.05 ("meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment").
Additionally, Applicant states the computing devices recited in the pending claims are not being used in their "ordinary capacities" as each is being improved to perform additional functions, mainly, the advent of additional information to inform the type of transaction. This logic is applied in Bascom, where the "filtering tool was included at a specific location, remote from the end-users, with customizable filtering." Likewise, the token service provider computing device is specifically located, in connection with the payment network, remote from the merchant (or presentation of the token), to customize the data included in the authorization request to further inform the transaction. This is a technical improvement that goes beyond using the computing device as a mere tool. The pending claims recite an integration of the alleged idea into a practical application, whereby the claims are in fact eligible.
Even more, Applicant states that the pending claims are also similar to Claim 1 of Example 42 of the USPTO's Subject Matter Eligibility Examples. In Example 42, the patent sought to solve problems associated with medical records having "format inconsistencies," and that are "stored locally on a computer in a non-standard format selected by whichever hardware or software platform is in use in the medical provider's local office." See, USPTO's Subject Matter Eligibility Examples at pp. 17-18.
Example 42 correctly acknowledges that Claim 1 "as a whole integrates the method of organizing human activity into a practical application" by reciting additional elements such as "storing information" and "converting updated information that was input by a user in a non-standardized form to a standardized format," that provide "a specific improvement over prior art systems by allowing remote users to share information in real time in a standardized format regardless of the format in which the information was input by the user." See, Id., at pp. 17-18. Similarly, the pending claims also recite additional elements, including, most specifically, the advent of the indicator of the verified signature and/or the confirmation of the type of the transaction as part of the authorization request in a specific data element thereof that provides specific improvements over prior systems, which would have required a separate data element to be carried to indicate the type of transaction.
Examiner fully considers Applicant’s position, but respectfully disagree because the claims continue to be directed to an abstract idea without significantly more.
That is, the judicial exception is not integrated into a practical application and the additional elements are merely used as circuitry and tools to perform an abstract idea and generally link the use of a judicial exception to a particular technological environment. Additionally, the additional element of the signed transaction using a key, detokenize the token, verify a signature and confirming the signed transaction type also does not improve a computer as it represents the mere performance of a mathematical calculation by a computer. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because using the additional elements to perform the steps amounts to no more than using a computer or processor to automate and implement the abstract idea. As discussed above, taking the claim elements separately, these additional elements perform the steps or functions of the abstract idea. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of transaction authorization. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and implement the abstract idea. Further, the additional element of detokenizing and verifying and confirming signature also does not improve a computer as it represents the mere performance of a mathematical calculation by a computer. The use of a computer or processor to merely automate and implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
With respect to the rejection relied up on, it is not based on (Finjan, Inc. v. BlueCoat Systems, Case No. 2016-2520 (Fed. Cir. January 10, 2018)), (Ancora Techs. v. HTC Am., Inc., 908 F.3d 1343, 1348-49 (Fed. Cir. 2018)), (Bascom Glob. Internet Servs., Inc. v. AT & T Mobility LLC , 827 F.3d 1341, 1349 (Fed. Cir. 2016)), but (Alice Corporation Pty. Ltd. v. CLS Bank International, et al. US Supreme Court, No. 13-298, June 19, 2014)).
That is, with respect to Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1304-05 (Fed. Cir. 2018) which is directed to an are abstract ideas of general virus screening and virus screening on an intermediate computer, but the court noted that the claimed method in the ’844 patent includes behavior-based scan instead of a conventional code-matching scan which is a characteristic that represents an improvement in computer functionality. Again, none of the limitation of the instant claims alone and/or as an ordered combination that are directed to general virus screening and virus screening on an intermediate computer.
Further, with respect to Ancora Techs. v. HTC Am., Inc., 908 F.3d 1343, 1348-49 (Fed. Cir. 2018), for U.S. Patent No. 6,411,941 ("the '941 Patent") of claim 1 is directed to using an agent to software licensing verification structure in the BIOS, and then actually verifying a program using that verification structure in which none of the claims limitations in the '941 Patent sufficiently recite how the use of an agent to place the structure in the BIOS, or placing and using such a structure in the BIOS leads to an improvement in computer functionality and the BIOS being used to house the verification structure is not sufficiently transformative so as to make this innovation more than a requirement that a generic computer to perform generic computer functions including storing data in the memory of a computer component that generally stores data is not transformative hence the Court disagrees that these limitations transform the abstract idea into something patent-eligible in application as the claimed process fails the second prong of the machine-or-transformation test because placing a verification structure within the BIOS does not transform it into a "different state or thing" and storage of data in a pre-existing memory location that typically stores data does not create a different entity, just as "[a]dding a computer to otherwise conventional steps does not make an invention patent-eligible." As such, the '941 Patent claims are directed to a patent-ineligible abstract idea. Therefore, the instant claims are not similar to Ancora.
Even more, With respect to Bascom Glob. Internet Servs., Inc. v. AT & T Mobility LLC , 827 F.3d 1341, 1349 (Fed. Cir. 2016) is directed to claims for combining the customization benefits of filters on a local computer with the security benefits of filters on an ISP server, and they did so by taking advantage of the ability of some ISPs to identify and associate accounts with content requests in which the Federal Circuit noted that the Bascom claims improved on the prior art that existed at the time the invention was made and did so by taking advantage of the ability of some ISPs to identify and associate accounts with content requests as a technical feature which Bascom harnessed to implement the claimed invention in which the Federal Circuit found sufficient to establish subject matter eligibility and BASCOM alleged that an inventive concept can be found in the ordered combination of claim limitations that transform the abstract idea of filtering content into a particular, practical application of that abstract idea and find nothing on the record that refutes those allegations as a matter of law or justifies dismissal under Rule 12(b)(6). As such, none of the instant claims individually, in ordered combination and as a whole are directed to content filtering to provide an improvement hence the argument in this regard is not convincing.
Additionally, with respect to Example 42, which is directed to claims with combination of additional elements including storing information, providing remote access over a network, converting updated information that was input by a user in a non-standardized form to a standardized format, automatically generating a message whenever updated information is stored, and transmitting the message to all of the users. The claim as a whole integrates the method of organizing human activity into a practical application.
As such, none of the instant claims are similar to those cases alleged by Applicant and the related argument cannot be convincing hence the claims stand rejected and are not patent eligible including each dependent claims.
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, 3-9 and 11-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Analysis
In the instant case, claims 1 and 3-8 are directed to a “Method” (Process). Claims 9, and 11-16 are directed to “A system, comprising: a processor; a memory…” (Machine). Claim 17 is directed to “A non-transitory computer-readable storage medium…” (Article of Manufacture). Therefore, these claims fall within the four statutory categories of invention.
The claims recite an abstract idea of transaction authorization, which is an abstract idea. Specifically, but for the additional elements, the claim under its broadest reasonable interpretation recites limitations grouped within the “Certain Methods of Organizing Human Activity,” and “Mathematical Concepts,” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test since the steps include commercial interactions, managing relationships and mathematical calculations (See MPEP 2106.04 & 2106.04(a)). The use of a physical aid to help perform Organized Human Activity and Mathematical Concept steps does not negate the Organized Human Activity and Mathematical Concept nature of the limitations, but simply accounts for variations in memory capacity from one person to another. Further, claims can recite a Methods of Organized Human Activity and Mathematical Concepts even if they are claimed as being performed on a computer. See MPEP § 2106.04(a)(2), subsection III. The claim limitations reciting the abstract idea are grouped within the “Certain Methods of Organizing Human Activity and Mathematical Concepts” grouping of abstract ideas as they relate to processing payment authorization requests data to associate payment data, verify transaction type indicators of the requests data and modifying the payment authorization requests data to the associated payment data before providing the modified requests to issuers of the payment data during commercial interactions between payers and payment service providers using managed payments data relationships and mathematical calculations for associating payments data and authorization data verification. More specifically, the following non-underlined claim elements recite the abstract idea while the underlined, bolded claim elements recite additional elements according to MPEP 2106.04(a).
Claims 1, as similar as 9 and 17,
A system for use in identifying types of network interactions, the system comprising at least one computing device of a token service provider, the at least one computing device configured to… A non-transitory computer-readable storage medium including executable instructions for identifying types of network interactions, which when executed by at least one processor, cause the at least one processor to:
receive at least a part of an authorization request for a transaction, the at least a part of the authorization request including a token specific to an account and a signed transaction type indicator, the signed transaction type indicator signed using a key of the token service provider computing device to render the signed transaction type indicator immutable;
detokenize the token into a primary account number (PAN) for the account;
verify a signature on the signed transaction type indicator is legitimate and unaltered;
confirm the signed transaction type indicator is consistent with an indicator of a type of transaction included in the authorization request by a merchant involved in the transaction; and
based on the verified signature and the confirmation of the type of the transaction:
modify the authorization request to include the PAN in a first data element of the authorization request and an indicator of to the verified signature and/or the confirmation of the type of the transaction in a second data element of the authorization request; and
transmit the authorization request to an issuer associated with the PAN, via a payment network, thereby enabling the issuer to decide to approve or decline the transaction based, at least in part, on the verified signature and/or the confirmation of the type of the transaction.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(d)), the additional elements are merely used as circuitry and tools to perform an abstract idea and generally link the use of a judicial exception to a particular technological environment. Specifically, these additional elements perform the steps or functions of the abstract idea. Viewed as a whole, the use of the additional elements as a tools to implement the abstract idea and generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Additionally, the additional element of “the signed transaction type indicator signed using a key of the token service provider computing device…” “detokenize the token,” “verify a signature on the signed transaction type indicator,” and “confirming… the signed transaction type…” also does not improve a computer as it represents the mere performance of a mathematical calculation by a computer. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106.05), using the additional elements to perform the steps amounts to no more than using a computer or processor to automate and implement the abstract idea. As discussed above, taking the claim elements separately, these additional elements perform the steps or functions of the abstract idea. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of transaction authorization. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and implement the abstract idea. Further, the additional element of detokenizing and verifying and confirming signature also does not improve a computer as it represents the mere performance of a mathematical calculation by a computer. The use of a computer or processor to merely automate and implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 3-8 and 11-16 further describe the abstract idea of transaction authorization. That is, although claims 3-8 and 11-16 recite further functional steps using the additional elements of token service provider, the additional element is merely used as circuitry and tools to perform an abstract idea and generally link the use of a judicial exception to a particular technological environment. Further, claims 7 and 15 recites “generate a cryptogram specific to the transaction…” in which non-underlined claim elements recite the abstract idea while the underlined, bolded claim elements recite additional elements, but the additional element of generating cryptograms also does not improve a computer as it represents the mere performance of a mathematical calculation by a computer. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
PGPub Powell et al. (US 2015/0127547 A1) discloses:
receive at least a part of an authorization request for a transaction, the authorization request including a token specific to an account; (Par. [0114] “The token requestor 114 may present the token to the merchant 106, who may generate a payment authorization request message including the token. The merchant 106 may send the payment authorization request message to the acquirer 108, who may then pass the payment authorization request message to the payment network 210.”)
detokenize the token into a primary account number (PAN) for the account; (Par. [0115] “the payment network 210 may interact with the token vault 218 and/or other network server(s) 220 to de-tokenize the token provided in the payment authorization request message. Specifically, the payment network 210 may retrieve the PAN represented by the token as a result of the de-tokenization process.”)
modify the authorization request to include the PAN (Par. [0135] “The payment network 412 may then modify the authorization request message 414 to generate a modified authorization request message 418. In the modified authorization message, the token may be replaced with the PAN;”); and
transmit the authorization request to an issuer associated with the PAN, via a payment network. (Figs. 1, 4; Par. [0135] “Upon generating the modified authorization request message 418, the payment network 412 may send the modified authorization request message 418 to the issuer 416.”)
PGPub Wong et al. (US 2021/0042753 A1) discloses:
receive at least a part of an authorization request for a transaction, the authorization request including a token specific to an account (Par. [0089] “Access device 160 or a merchant computer coupled to access device 160 may then generate an authorization request message including the account identifier or token, and additional information such as a transaction cryptogram and other transaction data, and forward the authorization request message to acquirer 174 associated with the merchant. The authorization request message can then be sent by acquirer 174 to payment processing network 194.”) and a signed transaction type indicator; (Pars. [0110] “in the ODA transaction illustrated in FIGS. 2A-2B, access device 260 may send a transaction type indicator in the terminal transaction data 210…” [0111] “the mobile application of portable communication device 201… generate dynamic transaction processing information using at least some of the received terminal transaction data 210, and send a set of transaction processing information 212 including the generated dynamic transaction processing information to access device 260… portable communication device 201 may also need to generate a signature based on at least some of the received terminal transaction data 210… the signature generation process can begin when the terminal transaction data 210 from access device 260 is received, and can be performed in parallel with the generation of the transaction cryptogram and transaction processing information 212.” [0124] “some or all of the data elements in the transaction processing information 212 and account data transmissions can be used by access device 260 to generate a transaction authorization request message.”)
verify a signature on the signed transaction type indicator; (Pars. [0097] “access to a good or service can be given to a user of the portable communication device based on authentication of a signature generated with a signature key…” [0110] “in FIGS. 2A-2B, access device 260 may send a transaction type indicator in the terminal transaction data 210…” [0111] “the signature generation process can begin when the terminal transaction data 210 from access device 260 is received, and can be performed in parallel with the generation of the transaction cryptogram and transaction processing information 212.”)
PGPub Gaddam et al. (US 2017/0338965 A1) discloses:
receive at least a part of an authorization request for a transaction, (Fig. 1; Par. [0100] “forward the authorization request message to the transaction processing network 140.”) the authorization request including a token (“An authorization request message may also comprise additional data elements corresponding to “identification information” including, by way of example only:… a PAN (primary account number or “account number”), a payment token,”) specific to an account (Par. [0029] “A “payment token” may include an identifier for a payment account that is a substitute for an account identifier, such as a primary account number (PAN).”);
detokenize the token into a primary account number (PAN) for the account; (Pars. [0033] “the de-tokenization may refer to the process of redeeming a token for the associated PAN value based on a token-to-PAN mapping stored, for example, in a token vault.” [0114] “The de-tokenization module 140P may comprise code that causes the processor 140A to de-tokenize payment tokens. For example, the de-tokenization module 140P may contain logic that causes the processor 140A to identify a payment credential associated with a payment token, such as a PAN or another payment token.”)
THIS ACTION IS MADE FINAL. 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.
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/WODAJO GETACHEW/Examiner, Art Unit 3697
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