DETAILED ACTION
Status of Claims
Claims 1-2, 4, 8-10, and 15-20 have been amended.
Claim 3 has been cancelled
Claims 1-2 and 4-20 are currently pending and have been considered by the examiner.
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 .
Response to Arguments
101 Rejection:
Applicant’s arguments have been considered and have been deemed unpersuasive based upon the rationale provided in the following 101 rejection.
Prior Art Rejection:
Applicant’s arguments have been considered and in view of additional search and consideration have been deemed persuasive by the examiner. Thus, the previously issued rejection has been rescinded.
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 1-2 and 4-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 8-14 are directed towards a method and claims 1-2 and 3-7 are directed to a system/apparatus, and claims 15-20 are directed towards a non-transitory computer readable medium. Therefore, these claims fall within the four statutory categories of invention.
Claim 8 recites the following:
A computer-implemented method comprising:
receiving a first request message from a merchant device, the first request message including a payment card identifier associated with a payment card;
generating a cryptogram, the cryptogram being a randomly generated transaction key that is unique among a plurality of cryptograms presentable to a payment network during authorization of payment card transactions;
storing a cryptogram mapping record that includes at least the cryptogram and a token associated with the payment card identifier in a mapping database, wherein the cryptogram mapping record binds the cryptogram to at least the token, a requesting merchant, and a transaction amount;
receiving a cryptogram verification request message from the payment network, the cryptogram verification request message being associated with an authorization request presented to the payment network, the cryptogram verification request message including the token and the cryptogram;
identifying the cryptogram mapping record based on the cryptogram presented in the cryptogram verification request message;
comparing the token from the cryptogram verification request message with the cryptogram mapping record in the mapping database to determine a match; and
in response to the token and cryptogram in the cryptogram verification request message matching the cryptogram mapping record, transmitting a cryptogram verification success message to the payment network, thereby causing the payment network to send the authorization request to an issuer.
Regarding Step 2A Prong One, the claims recite the abstract idea of mitigating risk associated with an economic transaction. Specifically, the claims recite the limitations underlined above which recite methods steps directed towards mitigating risk associated with an economic transaction which is grouped within the Certain Methods of Organizing Human Activity grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP § 2106.04) because the claims involve the process of mitigating risk in an economic transaction. Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)).
Regarding Step 2A Prong Two, the recited abstract idea 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 element(s) of the claim(s) such as a “computer” merely use(s) a computer as a tool to perform an abstract idea. Specifically, the “computer” perform(s) the steps or functions underlined above. The use of a processor/computer as a tool to implement the abstract idea 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)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), 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. 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 claim(s) 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), the additional element(s) of a “computer” amounts to no more than using a computer or processor to automate and/or implement the abstract idea. As discussed above, taking the claim elements separately, the “computer” perform(s) the steps or functions underlined above. 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 risk mitigation. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Regarding independent claims 1 and 14, the claims recite the additional limitations of “generate a token, the token being usable as a substitute for the PAN in a payment network” and “generate an original token, the original token being usable as a substitute for the PAN in a payment network” respectively. The examiner has determined that these limitations are also directed towards the recited process of performing the abstract idea of mitigating risk associated with an economic transaction. Thus, the rationale applied to independent claim 8 similarly applies to independent claims 1 and 14.
Dependent claims 2, 4-7, 9-14, and 16-20 further describe the recited abstract idea. 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. Specifically:
Claims 2, 9-10, and 16 merely further describes the data used and how it is used to performed the recited abstract idea of risk mitigation.
Claims 4-5, 11-12, and 17-18 merely further describe how validity is determined in order to mitigate risk associated with an economic transaction.
Claims 6-7, 13-14, and 19-20 recite additional limitaitons which are also directed towards the recited abstract idea of risk mitigation.
Therefore, as the dependent claims do not include additional elements that integrate the abstract idea into a practical application nor provide significantly more than the abstract idea, the dependent claims are also not patent eligible.
Allowable Subject Matter
Claims 1-2, and 4-20 recite subject matter that would be allowable if issues outlined above were remedied.
The following is the examiner’s statement of reasons for indicating allowable subject matter:
Claim 1 recites: “A tokenization system comprising: at least one processor; and at least one memory comprising computer-readable instructions, the at least one processor, the at least one memory and the computer-readable instructions configured to cause the at least one processor to: receive a first request from a merchant device, the first request including a primary account number (PAN), a merchant ID of a requesting merchant, and a transaction amount; generate a token, the token being usable as a substitute for the PAN in a payment network; generate a cryptogram, the cryptogram being a single-use transaction key for a transaction on the payment network, wherein the cryptogram is a randomly generated nonce data element that is unique among a plurality of cryptograms; store a cryptogram mapping between the token and the cryptogram in a mapping database, wherein the cryptogram mapping binds the cryptogram to at least the token, the requesting merchant, and the transaction amount; transmit the token and the cryptogram to the merchant device in response to the first request; receive a cryptogram verification request message from the payment network, the cryptogram verification request message being associated with an authorization request of the payment network, the cryptogram verification request message including the token and the cryptogram; compare the token and cryptogram of the cryptogram verification request message with the cryptogram mapping in the mapping database ; and in response to the token and cryptogram in the cryptogram verification request message matching the cryptogram mapping, respond to the cryptogram verification request message with a success indicator, thereby causing the payment network to send the authorization request to an issuer.”
The closest art of record, the combination of Jarosch and Aabye discloses as outlined in the non-final rejection mailed 26 March 2026.
However, the cited references, alone or in combination fail to disclose the combination of elements including: “generate a token, the token being usable as a substitute for the PAN in a payment network; generate a cryptogram, the cryptogram being a single-use transaction key for a transaction on the payment network, wherein the cryptogram is a randomly generated nonce data element that is unique among a plurality of cryptograms; store a cryptogram mapping between the token and the cryptogram in a mapping database, wherein the cryptogram mapping binds the cryptogram to at least the token, the requesting merchant, and the transaction amount; transmit the token and the cryptogram to the merchant device in response to the first request; receive a cryptogram verification request message from the payment network, the cryptogram verification request message being associated with an authorization request of the payment network, the cryptogram verification request message including the token and the cryptogram; compare the token and cryptogram of the cryptogram verification request message with the cryptogram mapping in the mapping database ; and in response to the token and cryptogram in the cryptogram verification request message matching the cryptogram mapping, respond to the cryptogram verification request message with a success indicator, thereby causing the payment network to send the authorization request to an issuer.”
Moreover, the missing claim limitations from the combination of Jarosch and Aabye are not found in a reasonable number of references.
Yet even if the missing claimed elements were found in a reasonable number of references, a person of ordinary skill in the art would not have been motivated to include these elements in Jarosch because Jarosch is not concerned with generating a cryptogram comprising an explicitly unique nonce data element and binding the cryptogram to a token using a mapping database.
Foreign prior art and NPL searches were conducted. However, no additional relevant prior art was found.
Conclusion
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 NICHOLAS K PHAN whose telephone number is (571)272-6748. The examiner can normally be reached M-F 1 pm-9 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel can be reached at 571-270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS K PHAN/Examiner, Art Unit 3699
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