DETAILED ACTION
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 .
This communication is a Final Office Action in response to Applicant’s amendment filed on April 13, 2026.
Claims 17, 19-22, 28, 30-34 and 36-39 have been examined in this application. All other claims are cancelled.
No information disclosure statements (IDS) has been filed.
Response to Arguments
Applicant's arguments filed April 13, 2026, pages 10-14, regarding claim rejections under 35 U.S.C. 101 have been fully considered but they are not persuasive.
Applicant notes that under Step 2A, Prong I, a judicial exception is based on determining whether the claims fall under the three abstract idea examples. This is incorrect. A determination of whether the claims are directed to an abstract idea is separate from determining whether the abstract idea falls under any of the three abstract idea groupings. For instance, a claim could be directed to an abstract idea, however, if the abstract idea does not fall under any of the groupings/sub-groupings, then the claims are deemed patent eligible. As such, the Applicant’s arguments that the claims are not directed to an abstract idea and that the claims do not fall under any of the three abstract idea categories is not persuasive. Applicant argues that the interaction between entities results in facilitation of transaction authentication. Applicant argues that the entities include “a financial institution backend, a customer electronic device, a merchant point of transaction device, and a payment host for a merchant;” id., 11.
The Examiner disagrees because the claimed scope does not in fact include all the above entities. At best the scope of the claims, claim 1 and 34, is directed to a financial institution and that the financial institution does. Per claim 28, the claim includes the addition of a customer electronic device and a payment host for a merchant. However, per claim 28, the customer electronic device and the payment host are not actively / positively performing any functions because the claimed functions are all carried out by the financial institution.
Applicant argues that the authentication claimed provides a meaningful way of using the alleged abstract idea.
The Examiner respectfully disagrees.Under MPEP §2106, the claims are analyzed to determine whether they recite:
(1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).
If the claims recite a judicial exception, under section (1), and fail to integrate the abstract idea into a practical application, section (2), then the claims are further analyzed to determine whether they:
(3) add a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP §2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
The claims are directed to a statutory subject matter. As a result, the claims are analyzed and deemed to recite an abstract idea. The abstract idea amounting to merely sending an authorization to advance a transaction without significantly more. The abstract idea clearly falls under certain methods of organizing human activity, including commercial interactions such as sales activities or behaviors, and business relations. The foundation of a transaction requires that parties have a relationship between one another to allow a transaction to be processed. Such a relationship between parties is a basic and fundamental sales activity. Receiving a request to carry out a transaction including a value, authenticating the value and approving a request for the transaction using an account and after approval sending the decision to an entity such as a seller to advance the transaction highlights clearly the above abstract idea and its related grouping and sub-grouping. The abstract idea also clearly falls under mental processes, such as concepts performed in the human mind like observation, evaluation, judgement, opinion and performing these using pen-and-paper. The claimed scope requires a human to receive a request for a transaction including a value, which can be done verbally and or in writing. The human can authenticate the value based on a stored mental value or a value on a table on a paper. The human approves the value and then authorizes a transaction after receiving the request for authorization. The authorization is sent to another human in response to the validation and authorization of the transaction. The message can be provided verbally or on paper.
Moving to Step-2A, Prong II, contrary to Applicant' s arguments, the Examiner finds no additional elements in the claims as a whole that would amount to a practical application. The value authentication is basic and high level, failing to amount to even an additional element. For instance, claim 1 recites the following additional elements: Financial institution electronic device, customer electronic device executing a merchant computer program, a customer electronic device executing a second party computer program, a payment host, non-transitory computer readable storage medium, instructions, and one or more processors.
Applicant' s arguments directed to the transaction authentication amounting to a practical application is not persuasive. The claims merely capture a generic device or devices that are utilized to apply / carry out the abstract idea. The additional elements are recited at a high level of generality, wherein the claims merely amount to an abstract idea that is implemented using generic computers, performing generic computer functions such as receiving data, validating the data, receiving further information/data, and outputting a result based on the approval of the data. Each of the additional elements / limitations are no more than mere instructions to apply the exception using generic computer components or a generic device. Accordingly, even in combination, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Likewise, the claims fail to include limitation to integrate the abstract idea into a practical application because they simply add insignificant extra solution activity to the judicial exception and generally link the use of the exception to a particular technology or field of use.
Under Step-2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to merely instructions to apply the exception using generic computer components. The claim limitations do not improve another technology or technical field, improve the functioning of a computer itself, apply the abstract idea with, or by use of, a particular machine (not a generic computer, not adding the words "apply it" or words equivalent to "apply the abstract idea", not mere instructions to implement an abstract idea on a computer, adding insignificant extra solution activity to the judicial exception, generally linking the user of the judicial exception to a particular technological environment or field of use), effects a transformation or reduction of a particular article to a different state or thing, or adds meaningful limitations that amount to more than generally linking the use of the abstract idea to a particular technological environment. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
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. The dependent claims fail to recite additional elements that would amount to a practical application or amount to significantly more than the judicial exception as discussed above.
The claims are not patent eligible.
Claim Objections
Claim 17 recites “receiving, by a financial institution electronic device for financial institution…” It should instead recite “receiving, by a financial institution electronic device for a financial institution…”
Claims 28, 30-33 are objected to because they fail to include appropriate Beauregard language for the claimed entities. For example, the claim should recite: A system, comprising: a financial institution electronic device for a financial institution comprising a financial institution processor, a financial institution memory storing financial institution instructions, when executed by the financial institution processor causes the financial institution processor to perform operations comprising: [list only function carried out by the financial institution]. The same should be repeated for the merchant device and the customer electronic device.
Claim Rejections - 35 USC § 112
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 28-33 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.
Per claim 28, the claim recites “the merchant computer program” in the 4th and 6th limitations. There is insufficient antecedent basis in the claim for the limitation.
Per claims 34, 36-39, the claim, 34, recites “receiving, from merchant computer program, an authorization request.” The claim initially recites “receiving, and from a customer electronic device executing a merchant computer program for a merchant.” It is not clear whether the “merchant computer program” is the same or different than the “a customer electronic device executing a merchant computer program for a merchant.” Emphasis added.
All dependent claims are rejected under the same rational and for mere dependence on the rejected 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 17-22, and 28-39 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 17-22, and 28-39 fall within at least one of the four categories of patent eligible subject matter (process, machine, manufacture, or composition of matter).
Claims 17-22, and 28-39 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of approving a transaction authorization request and forwarding said approval without significantly more.
The abstract idea is categorized under certain methods of organizing human activity and mental processes. The claims capture a concept, which as a whole, can be carried out by a human mind performing concepts such as observation, evaluation, judgement, opinion, and carrying out these concepts using pen and paper. likewise, the claims capture commercial interactions such as sales activities and business relations. Claim 17 amounts to mere receiving of a transaction request between entities (i.e. a first user and another user using verbal or written communication) and the request including an authentication value. The received authentication value is authenticated with a stored value, again can be done in a human head or using a table on paper to match the received value to the written value. Assuming that in response to the validation of the value, an authorization request is received and approved before being sent to another entity or perhaps the second user. Either way, approval of and sending of information is capable of being done by a human. The above detailed flow of the entire scope of the claims is also defined by the certain method of organizing human activity grouping and its subgroupings, which clearly link the claims to commercial interactions and business relations. The claims are based on a transaction being requested, and at best, approved; thus, a clear business relation between at least the requestor and validator of the transaction.
Claim 1, in pertinent part, recites:
A method, comprising:
receiving, by… [a first entity] and from… [a second entity], a transaction request to pay for a transaction using a wallet for the… [first entity], the transaction request comprising an authentication value;
validating… the authentication value by comparing the authentication value to a stored authentication value;
receiving… an authorization request; and
approving… the authorization request and transmitting authorization to a payment host for the merchant.
The judicial exception is not integrated into a practical application. The claims recite the following additional elements: Financial institution electronic device, customer electronic device executing a merchant computer program, a customer electronic device executing a second party computer program, a payment host, non-transitory computer readable storage medium, instructions, and one or more processors. The additional elements are recited at a high level of generality, wherein the claims merely amount to an abstract idea that is implemented using generic computers, performing generic computer functions such as receiving data, validating the data, receiving further information/data, and outputting a result based on the approval of the data. Each of the additional elements / limitations are no more than mere instructions to apply the exception using generic computer components or a generic device. Accordingly, even in combination, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Likewise, the claims fail to include limitation to integrate the abstract idea into a practical application because they simply add insignificant extra solution activity to the judicial exception and generally link the use of the exception to a particular technology or field of use.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to merely instructions to apply the exception using generic computer components. The claim limitations do not improve another technology or technical field, improve the functioning of a computer itself, apply the abstract idea with, or by use of, a particular machine (not a generic computer, not adding the words "apply it" or words equivalent to "apply the abstract idea", not mere instructions to implement an abstract idea on a computer, adding insignificant extra solution activity to the judicial exception, generally linking the user of the judicial exception to a particular technological environment or field of use), effects a transformation or reduction of a particular article to a different state or thing, or adds meaningful limitations that amount to more than generally linking the use of the abstract idea to a particular technological environment. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
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. For instance, claims 20-21 and related claims include provisioning of a session ID and a cryptogram. Again, these elements are not considered additional elements as they are nothing more than mere provisioning of data from one entity to another. They are recited at a high level of generality and fail to amount to a practical application, a solution to a technical field or device. The dependent claims fail to recite additional elements that would amount to a practical application or amount to significantly more than the judicial exception as discussed above. The dependent claims further describe the abstract idea.
The claims are not patent eligible.
Prior Art
The claims are not rejected under prior art because the claims recite limitations directed to a architecture between entities that cannot be deemed obvious in view of the art do to the specific entity carrying out the limitations in response to information provided to the entity from another entity and further in view of the forwarding of a response to an entity that is different than other claimed entities. The claims are novel because of the architecture.
References are cited which teach the provisioning of data, such as a token, a code, a password, to a merchant to initiate a transaction. The merchant being able to validate the received data and in response send a request to settle the transaction with a bank/financial institution. The claims however, are different than the teachings because the claims clearly capture an entity, the 1st party, receiving a value and request to conduct a transaction from a second party. The first party then validates the value received before receiving an authorization request from the second party and the first party approving the request and forwarding the authorization to a different entity; “a payment host for the second party.”
Again, references cited include teachings of providing by a merchant to a bank a value and the bank validating the value, and other transaction data and approving the transaction based on the information provided, the validation, and sending the response of the transaction to the merchant, a third-party, a consumer, or another entity different than the merchant. The issue is that the claims do not recite sending all the data of the transaction to the bank in one instance and then receiving a response. There are two distinct communications between the first and second entity before approval is carried out and a response is sent to a host.
U.S. Patent 10,380,583 to Ellis et al. (Ellis), teaches receiving via a messaging hub a code and an identifier for a merchant from a first financial institution, determining, by the messaging hub, a second financial institution based at least partially on the code, sending the code and the merchant identifier to the second financial institution, and receiving from the second financial institution account information to be sent to the first financial institution. The system and method includes sending the account information to the first financial institution to allow the first financial institution to process the payment from an account held by a payor to an account held by the merchant. As noted by the summary of Ellis, Ellis does not teach a method comprising: receiving, by a first party computer program executed by a first party electronic device for a first party and from a customer electronic device executing a second party computer program for a second party, a transaction request to pay for a transaction using a wallet for the first party, the transaction request comprising an authentication value; validating, by the first party computer program, the authentication value by comparing the authentication value to a stored authentication value; receiving, by the first party computer program and from the second party computer program an authorization request; and approving, by the first party computer program, the authorization request and transmitting authorization to a payment host for the second party.
U.S. Patent Application Publication 2017/0046679 to Gotlieb et al. (Gotlieb) teaches a user device comprising an application and a stored value card carrying out a purchase mode. The issuer receives a request from the App for a value card based on the provided information sent from the mobile device to the issuer. Upon receipt of the request 1013 from the App 1011, the issuer 1012 will determine, based on the information received in the request 1013 (e.g., App-related purchase information) and the stored App-related information, whether to issue an unfunded stored-value card 1017 in response to the request 1013. The issuer 1012 will apply logical rules to the App-related purchase information and the App-related information to determine whether to issue the requested stored-value card 1017. The issuer may generate a stored-value card 1017 or request a stored value card 1017 from a third party, e.g., a third-party funding source 1016. A user indicates the items it wishes to purchase to the POS and allows the App to communicate an issued, but unfunded, stored-value card to the POS to satisfy all of, or a portion of, the purchase amount for the desired purchase transaction. Once the POS receives the card, it transmits an authorization request to a payment processing system. The issuer receives the request, query database, and authorize the transaction based on matching an App ID with a token card (unfunded value card) and send its own issuer authorization request to the third-party funding source to settle the transaction. If the issuer receives an approval of its issuer authorization request from the third party funding source, the issuer will send an approval of the authorization request to the POS 1014 to facilitate the completion of the purchase transaction.
From the above, the reference includes the architectural entities as claimed, however, these entities do not perform the functions as claimed. Thus, it would not be obvious to combine such a reference with another to teach the claimed architecture to manipulate data to cause a transaction settlement.
U.S. Patent Application Publication 2014/0090045 to Sanchez et al. (Sanchez) teaches a mobile device sending data including personal and transaction data to a remote server. The remote server tokenizes the data and sends it back to the mobile device and forward this generated token to a merchant. The merchant can authenticate the user using the token without having to enter secure user data.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is listed on for PTO-892.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EL MEHDI OUSSIR whose telephone number is (571)270-0191. The examiner can normally be reached M-F 9AM - 5PM.
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Sincerely,
/EL MEHDI OUSSIR/Primary Examiner, Art Unit 3699
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