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 .
DETAILED ACTION
This Non-Final rejection is in response to the application filed on January 17, 2025 and the response to the Restriction/Election requirement filed on March 16, 2026.
Election/Restrictions
Applicant’s election without traverse of Claims 1-16 in the reply filed on March 16, 2026 is acknowledged.
Claims 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 16, 2026.
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 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-16 are directed to a system, method, or product which are/is one of the statutory categories of invention. (Step 1: YES).
The Examiner has identified independent method Claim 9 as the claim that represents the claimed invention for analysis and is similar to independent system Claim 1. Claim 9 recites the limitations of receiving, via a mobile device, an inactive payment token associated with a payment card of a customer; transmitting, by the mobile device, a proximity notification to an automated teller machine (ATM) when the mobile device is proximate the ATM; receiving, by the mobile device, a notification from the ATM prompting the customer to activate the inactive payment token via the ATM in response to the proximity notification and based on a determination by the ATM that the inactive payment token is inactive; establishing, by the mobile device, a short-range communication session with the ATM; providing authentication information to the ATM; receiving an indication of a change in status of the inactive payment token to active from the ATM based on the customer being authenticated using the authentication information; and updating the status of the inactive payment token from inactive to active.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity. Changing the status of a payment token recites a commercial or legal interaction. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a commercial or legal interaction, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. The mobile device and ATM in Claims 1 and 9 is just applying generic computer components to the recited abstract limitations. The payment token associated with a payment card of a customer in Claims 1 and 9 appears to be just software. Claim 9 is also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims are abstract)
This judicial exception is not integrated into a practical application. In particular, the claims only recite the mobile device and ATM in Claims 1 and 9 and the payment token associated with a payment card of a customer in Claims 1 and 9. The computer hardware is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. 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. Therefore, claims 1 and 9 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. See Applicant’s specification para. [0067-0072] about implementation using general purpose or special purpose computing devices and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. Even assuming there was a technical problem, the claims, as written, fail to recite the details of how a technical solution to the technical problem was accomplished. If there was a technical problem (e.g., existing technology was incapable of performing the claimed functions) then the claims should recite the details of the technical solution (e.g., how existing technology was improved to overcome this inability). However, the claims, as written, provide no such details and merely recite that the claimed functions (i.e., the outcome) are being performed. 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. Thus claims 1 and 9 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims 2-8 and 10-16 further define the abstract idea that is present in their respective independent claims 1 and 9 and thus correspond to Certain Methods of Organizing Human Activity and hence are abstract for the reasons presented above. Claims 2, 4, 5, 10, 12, and 13 and further describe displaying indications about the payment token’s status without adding significantly more; Claims 3 and 11 further include using the mobile device’s GPS in determining the location of the mobile device without adding significantly more; Claims 6 and 14 further describe the authentication steps; Claims 7, 8, 15, and 16 defines the payment card as a credit or debit card. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the claims 2-8 and 10-16 are directed to an abstract idea. Thus, the claims 1-16 are not patent-eligible.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. PGPub. 2016/0253651 (Park et al. ‘651).
Re Claim 1: Park et al. ‘651 disclose a mobile device (paragraph [0089]) comprising: a processing circuit comprising a processor and a memory (Figure 1), the memory storing instructions that, when executed by the processor, cause the processing circuit to: receive an inactive payment token associated with a payment card of a customer (abstract, paragraph [0243]); transmit a proximity notification to an automated teller machine (ATM) when the mobile device is proximate the ATM (paragraph [0137]); receive a notification from the ATM prompting the customer to activate the inactive payment token via the ATM in response to the proximity notification and a determination by the ATM that the inactive payment token is inactive (paragraphs [0243, 0299, 1868]); establish a short-range communication session with the ATM; provide authentication information to the ATM (paragraph [1875]); receive an indication of a change in status of the inactive payment token to active from the ATM based on the customer being authenticated using the authentication information (paragraphs [0243, 0435]); and update the status of the inactive payment token from inactive to active (paragraphs [0243, 0435]).
Re Claim 2: Park et al. ‘651 disclose the mobile device substantially as claimed, in supra, including that the instructions, when executed by the processor, further cause the processing circuit to: in response to the status of the payment token being updated to active, display a notification to the customer indicating that the payment token has been activated (paragraphs [0856, 0866, 0870]).
Re Claim 3: Park et al. ‘651 disclose the mobile device substantially as claimed, in supra, including that the instructions, when executed by the processor, further cause the processing circuit to: monitor a location of the mobile device using global positioning system (GPS) data; and determine when the mobile device is proximate the ATM based on the GPS data (paragraphs [0108, 1072, 1953]).
Re Claim 4: Park et al. ‘651 disclose the mobile device substantially as claimed, in supra, including that the instructions, when executed by the processor, further cause the processing circuit to: in response to the customer attempting to use the inactive payment token to make a payment, display an alert to the customer indicating that the inactive payment token needs to be activated (paragraphs [0243, 0299, 1868]).
Re Claim 5: Park et al. ‘651 disclose the mobile device substantially as claimed, in supra, including that the alert further includes a location of the ATM through which the customer can activate the inactive payment token (paragraphs [0197, 1187]).
Re Claim 6: Park et al. ‘651 disclose the mobile device substantially as claimed, in supra, including that the instructions, when executed by the processor, further cause the processing circuit to: receive at least one authentication credential relating to the payment card; and verify the at least one authentication credential (Figures 22 & 23).
Re Claim 7: Park et al. ‘651 disclose the mobile device substantially as claimed, in supra, including that the payment card is a debit card (paragraph [0005]).
Re Claim 8: Park et al. ‘651 disclose the mobile device substantially as claimed, in supra, including that the payment card is a credit card (paragraph [0005]).
Re Claims 9-16: Method claims 9-16 are substantially similar to previously rejected device claims 1-8 and are therefore considered to be rejected here using the same art and rationale.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. References A-E cited on PTO-892 have been included as being directed towards relevant prior art in the field of invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDSAY M MAGUIRE whose telephone number is (571)272-6039. The examiner can normally be reached Monday to Friday 8:30 to 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Coupe can be reached at (571) 270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Lindsay Maguire
4/1/26
/LINDSAY M MAGUIRE/Primary Examiner, Art Unit 3619
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