DETAILED ACTION
1. 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 .
2. Status of Application and Claims
Claims 1-12 are pending.
This office action is being issued in response to the Applicant's filing(s) on 1/13/2025.
3. Claim Interpretation
The subject matter of a properly construed claim is defined by the terms that limit its scope when given their broadest reasonable interpretation. see MPEP §2013(I)(C). Specifically, the “broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). However, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See MPEP §2111, citing In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984).
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. See MPEP §2013(I)(C).
As such, claim limitations that contain statement(s) such as “if,” “may,” “might,” “can,” and “could” are treated as containing optional language. See MPEP §2013(I)(C). As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted. See MPEP §2013(I)(C).
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. See MPEP §2111.04(II). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See MPEP §2143.03, citing Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009);
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble. See MPEP §2111.02;
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby.” See MPEP §2111.04;
Contingent limitations. See MPEP §2111.04(II);
Printed matter. See MPEP §2111.05; and
Functional language associated with a claim term. See MPEP §2181.
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following italicized, underlined and/or boldened language is interpreted as not further limiting the scope of the claimed invention.
Additionally, the following italicized, underlined and emboldened language is not necessarily an exhaustive list of claim language that is interpreted as not further limiting the scope of the claimed invention. Applicant should review all claims for additional claim interpretation issues.
Claim 1 recites a method comprising:
if authorization is provided, transmitting the authorization to the terminal;
if authorization is provided, transmitting from the terminal the unique code to the cloud-based security application;
verifying, at the cloud-based security application, the unique code;
if verified, the security application transmitting an approval to the terminal; and
completing the transaction, by the terminal, when the approval is received.
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent is not met. See MPEP §2111.04(II).
Usage of the term(s) and/or phrase(s) “if authorization is provided,” “if verified,” and “when approval is received” in Claim 1 suggests that there remains the possibility that the contingent limitations are not performed as the condition(s) precedent is not met (i.e., authorization is not provided, the unique code is not verified, and approval is not received). Therefore, the claim limitations based upon the condition are optional claim limitations. As a matter of linguistic precision, optional claim limitations do not narrow the scope of the invention, since they can always be omitted. See MPEP §2111.04(II).
As the Applicant does not address what happens should the optional claim limitation(s) fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
Claim 5 recites a method wherein the terminal is a computer used in an online transaction.
Method claims are defined by the method steps being actively performed, not method steps performed in the past (i.e., used in an online transaction). Claiming method steps in the past tense can be interpreted as the method steps performed in the past are outside the scope of the claimed method. Alternatively stated, the scope of the claimed method are the active method steps which are building off a pre-existing state. The method steps performed for creation of the pre-existing state are outside the scope of the claimed invention.
4. 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 1-12 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
STEP 1
The claimed invention falls within one of the four statutory categories of invention (i.e., process, machine, manufacture and composition of matter). See MPEP §2106.03.
STEP 2A – PRONG ONE
The claim(s) recite(s) a method and system(s) to perform a method comprising:
receiving data from a card at a [payee] to initiate a transaction;
…
transmitting, by the [payor], a unique code to the [payee];
transmitting, by the [payee], information including the unique code to a … security [provider];
verifying, at the … security [provider], the information;
requesting, by the … security [provider], approval of the [payer];
approving, by the [payer], the transaction;
if authorization is provided, transmitting the authorization to the [payee];
if authorization is provided, transmitting from the [payee] the unique code to the … security [provider];
verifying, at the … security [provider], the unique code;
if verified, the security [provider] transmitting an approval to the [payee]; and
completing the transaction, by the [payee], when the approval is received.
These limitations, as drafted, under its broadest reasonable interpretation, covers a series of steps instructing how to process a financial transaction which is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(A).
Examiner notes that processing payments is a court-provided example of a fundamental economic practice. See MPEP §2106.04(a)(2)(II)(A), citing Inventor Holdings, LLC v. Bed Bath Beyond, 876 F.3d 1372, 1378-79, 125 USPQ2d 1019, 1023 (Fed. Cir. 2017).
Accordingly, the claimed invention recites an abstract idea.
STEP 2A – PRONG TWO
The claimed invention recites additional elements (i.e., computer elements) of a terminal (Claim(s) 1 and 10-12), a short range communication link (Claim(s) 1), a mobile device (Claim(s) 1, 10-12), a security application (Claim(s) 1 and 10-12), a processor (Claim(s) 10-12), a memory (Claim(s) 10-12), a card reader (Claim(s) 10), a short-range interface (Claim(s) 10 and 11), an internet interface (Claim(s) 10-12) and a cloud server (Claim(s) 12).
The claimed invention does not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field; improvements to the functioning of the computer itself; are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; are not applying the judicial exception with or by use of a particular machine; are not effecting a transformation or reduction of a particular article to a different state or thing; and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §2106.04(d).
The additional elements are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. See MPEP §2106.05(f). Alternately, the additional elements amount to no more than generally linking the exception to a particular technological environment or field of use. See MPEP §2106.05(h). Accordingly, these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claimed invention is directed to an abstract idea without a practical application.
STEP 2B
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer. See MPEP §2106.07(a)(II). The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
DEPENDENT CLAIMS
Dependent Claim(s) 2-9 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 1. As such, the dependent claims are also grouped an abstract idea utilizing the same rationale as previously asserted against the independent claims.
Dependent Claim(s) recite additional elements (i.e., computer elements) of a QR code (Claim(s) 2), a computer (Claim(s) 5 and 6), a smart phone and tablet (Claim(s) 6), and Bluetooth, UWB or NFC (Claim(s) 7).
In each case, the additional element(s) are recited at a high level of generality such that these additional element(s) amount to no more than mere instructions to apply the exception using a generic computer component.
The dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the judicial exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination utilizing the same rationale as previously asserted against the independent claims.
Accordingly, the dependent claim(s) are also not patent eligible.
Appropriate correction is requested.
5. Claim Rejections - 35 USC § 112 (b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites a method comprising:
transmitting, by the terminal, information including the unique code to a cloud based security application;
verifying, at the cloud based security application, the information;
requesting, by the cloud-based security application, approval of the mobile device;
approving, by the mobile device, the transaction;
if authorization is provided, transmitting the authorization to the terminal;
if authorization is provided, transmitting from the terminal the unique code to the cloud-based security application;
verifying, at the cloud-based security application, the unique code;
if verified, the security application transmitting an approval to the terminal; and
completing the transaction, by the terminal, when the approval is received.
The claims, as written, recite that the terminal transmits the unique code to the cloud based security application, as the unique code is a component element of the information.
However, the claims then recite the terminal only transmits the unique code if authorization is provided. As the claims do not recite that authorization is provided, under the broadest reasonable interpretation, no authorization is provided and no transmission takes place.
Is the terminal transmitting the unique code to the cloud based security application or not? Or are there two instances of the terminal transmitting the unique code to the cloud based security application, one instance that definitely occurs and one instance that does not necessarily occur?
Appropriate correction is requested.
6. 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, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 4-8 and 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sofranos (US PG Pub. 2018/0276652) in view of Kushevsky (US PG Pub. 2015/0339648).
Regarding Claim 1, Sofronas discloses a method of securing a transaction, comprising:
providing a short-range communications link between a mobile device and the terminal, the mobile device being proximate to the terminal and associated with the user. (see para. 50);
transmitting, by the mobile device, a unique code (mobile device ID) to the terminal (point-of-sale). (see para. 50);
transmitting, by the terminal (mobile device ID), information (financial transaction request message) including the unique code to a security application (transaction server). (see para. 50);
verifying (validates), at the security application (network server), the information (financial transaction request message). (see para. 50);
requesting, by the security application (transaction server), approval of the mobile device (via entering a PIN at the mobile device). (see para. 50);
approving, by the mobile device, the transaction (via entering a PIN at the mobile device). (see para. 50);
if authorization is provided (via entering a PIN at the mobile device), transmitting the authorization (payment authorization results) to the terminal (point-of-sale). (see para. 50);
if authorization is provided, transmitting from the terminal (POS) the unique code (mobile device ID) to the cloud-based security application;
verifying (validates), at the security application (transaction server), the unique code (financial transaction request message containing the mobile device ID);
if verified (validated), the security application (transaction server) transmitting an approval (payment authorization results) to the terminal (POS); and
completing the transaction, by the terminal (POS), when the approval is received.
Sofranos does not teach a method comprising receiving data from a card at a terminal to initiate a transaction; or wherein the security application is a cloud-based security application.
Kushevsky discloses a method comprising:
receiving data from a card at a terminal (POS) to initiate a transaction. (see para. 42); and
wherein the security application is a cloud-based security application (cloud computing). (see para. 57).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Sofranos to incorporate cloud-based applications, as disclosed by Kushevksy, thereby obtaining the inherent benefits of cloud computing, such as flexibility and efficiency.
Regarding Claim 4, Sofranos discloses a method wherein the terminal is a point-of-sale terminal. (see para. 12).
Regarding Claim 5, Sofranos discloses a method wherein the terminal is a computer used in an online transaction. (see para. 81).
Regarding Claim 6, Sofranos discloses a method wherein the mobile device is one of a smart phone, a tablet, or a computer. (see para. 1).
Regarding Claim 7, Sofranos discloses a method wherein the short-range communications link is one of Bluetooth, ultra-wideband (UWB), or near-field communications (NFC). (see para. 185).
Regarding Claim 8, Sofranos discloses a method wherein the transaction is a financial transaction. (see abstract).
Regarding Claims 10-12, such claim(s) recite substantially similar limitations as claimed in previously rejected claim(s), Claims 10-12 recite the component structural elements recited as functioning in combination in Claim 1, and, therefore, would have been obvious based upon previously rejected claim(s).
Claim(s) 2 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sofranos and Kushevsky, as applied to Claim 1 above, and further in view of Tu (US Patent 11,715,091).
Regarding Claims 2 and 3, Sofranos discloses a method comprising providing the communication link includes establishing the communications link between the terminal and the mobile device. (see para. 50).
Sofranos does not teach a method comprising providing, at the terminal, a visual code with link information; or reading, by the mobile device, the visual code.
Sofranos does not teach a method wherein wherein the communication link provided is in accordance with the information; or wherein the visual code is a QR code.
Tu discloses a method comprising:
providing, at the terminal, a visual (QR) code with link information. (see fig. 3; col. 3, line 65 – col. 4, line 30);
reading, by the mobile device, the visual (QR) code. (see fig. 3; col. 3, line 65 – col. 4, line 30);
providing the communication link includes establishing the communications link (connection) between the terminal and the mobile device according to information (QR code). (see fig. 3; col. 3, line 65 – col. 4, line 30);
Tu discloses a method wherein the visual code is a QR code. (see fig. 3; col. 3, line 65 – col. 4, line 30).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Sofranos and Kushevsky to incorporate a connection via a visual code, as disclosed by Tu, thereby providing a user-friendly means by which to connect two devices.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sofranos and Kushevsky, as applied to Claim 1 above, and further in view of Khan (US PG Pub. 2013/0275307).
Regarding Claim 9, Sofranos does not teach a method wherein the transaction is an access transaction.
Khan discloses a method wherein the transaction is an access transaction (access control transaction). (see para. 19).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Sofranos and Kushevsky to incorporate an access transaction, as disclosed by Khan, as an access transaction is a standard and conventional transaction performed between a mobile device and a terminal.
7. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON M. BORLINGHAUS whose telephone number is (571)272-6924. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RYAN D. DONLON can be reached at (571)270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 March 12, 2026