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 .
Status of Claims
This action is in reply to the communication(s) filed on 02 July 2026.
Claim 9 is amended.
Claim(s) 1-17 is/are currently pending and have been examined.
Response to Arguments
Applicant's arguments filed 02 July 2026 have been fully considered but they are not persuasive.
Double Patenting
Examiner notes that the Double Patenting Rejection is still applicable to the instant claims.
Rejection Under 35 U.S.C. §101
Applicant argues that the recited computer elements are a particular machine or manufacture that is integral to the claim and thus the claim is integrated into a practical application. Examiner respectfully disagrees. It is important to note that a general purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions does not qualify as a particular machine. If the applicant asserts that the claim recites significantly more because the generic computer is 'specially programmed' or is a 'particular machine' the examiner should look at whether the added elements provide significantly more than the judicial exception. See MPEP § 2106.05(b)(I). The processor, non-transitory memory, data store, mentioned above is/are not described in further detail within the applicant’s specification. Therefore examiner must interpret these elements as generic computer components. The application mentioned above is/are disclosed in applicant’s specification (See paragraph [0072] of the specification). The component is described as:
“Many variations, combinations, and modifications of the applications disclosed herein are possible and are within the scope of the disclosure. Accordingly, the scope of protection is not limited by the description set out above, but is defined by the claims which follow, that scope including all equivalents of the subject matter of the claims.”
Therefore applicant’s own specification supports these components as generic computer components. Applicant’s recitation of generic computer components does not qualify as a particular machine or manufacture.
Applicant appears to assert that the alleged judicial exception is a “mental process for authenticating a transaction”. This is incorrect. As stated in the prior and instant Office Action “For example, but for the recited computer language, the limitations in the context of this claim describes Mitigating Risk. Mitigating Risk is described when analyzing a transaction, declining said transaction, and collecting information about the fraudulent actor in order to prevent future access. If a claim limitations, under their broadest reasonable interpretation, describes Fundamental Economic Principles or Practices but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Activity” grouping of abstract ideas.” Thus the identified Abstract idea is “Certain Methods of Organizing Human Activity”.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,260,412, Claims 1-17 of U.S. Patent No. 11,887,125, and Claims 1-8 of U.S. Patent No. 11,232,452. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are obvious combination of these same elements present in the reference patents, are broader than, use non-identical but functionally similar wording, or omit elements with a corresponding loss of function. The omission of an element with a corresponding loss of function is an obvious expedient. See In re Karlson, 136 USPQ 184 and Ex parte Rainu, 168 USPA 375.
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.
Step 1 of the 101 Analysis:
Claims 1-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recites a two systems and a method for dynamically detecting and preventing consumer fraud. These are machines and a process which are within the four categories of statutory subject matter.
Step 2A Prong 1 of the 101 Analysis:
The following limitations and/or similar versions are recited in claim(s) 1, 9 and 14:
Claim 1:
“receiving a request to engage in a transaction using a stored-value card,”
“wherein the request is associated with an artifact,”
“wherein the artifact comprises at least one of a profile, a key, a fingerprint, and a digital fingerprint;”
“determining whether the artifact is approved to use the stored-value card based upon at least one of: an analysis of a risk score associated with the request and a risk threshold, wherein the risk threshold is dynamically updated based on real- time system received data, a determination as to whether the first party is on a banned access list based upon the received artifact, and a determination as to whether the artifact is associated with the stored-value card;”
“determining whether the artifact is approved to use the stored-value card,…: declining to process the request and instead performs an alternate environment transaction which appears to the first party as a processing of the request, wherein alternate environment comprises a dummy website.”
Claim 9:
“receiving,… , a request from a requesting party to at least one of view a merchant website and engage in a transaction using a stored-value card, wherein the request is associated with a risk score and a risk threshold, wherein the request is associated with an artifact, wherein the artifact comprises at least one of a profile, a key, a fingerprint, and a digital fingerprint;”
“determining,…, that the requesting party is not approved for the transaction,”
“declining,…, to process the request and instead performing an alternate environment transaction which appears to the requesting party as a processing of the request, wherein alternate environment comprises a dummy website;”
“updating,…, the profile associated with the requesting party based upon declining to process the request, wherein updating the profile comprises updating the risk score and wherein the risk threshold is dynamically updated based on… system received data.”
Claim 14:
“receive a request to use a stored-value card from a requesting party, wherein the request is associated with at least one artifact of a plurality of artifacts;”
“determine the least one artifact of the plurality of artifacts is on a banned artifacts list,”
“determine that the request is not associated with the stored-value card;”
“in response to the determination that the request is not associated with the stored-value card, …decline to process the request, and instead perform an alternate environment transaction which appears to the requesting party as a processing of the request, wherein alternate environment comprises a dummy website.”
These limitations, as drafted, are a process that, under its broadest reasonable interpretation, describes Fundamental Economic Principles or Practices but for the recitation of generic computer components. That is, other than reciting “a non-transitory memory”, “a processor”, “at least one application”, or “a data store” nothing in the claims’ elements precludes the steps from practically describing Fundamental Economic Principles or Practices. For example, but for the recited computer language, the limitations in the context of this claim describes Mitigating Risk. Mitigating Risk is described when analyzing a transaction, declining said transaction, and collecting information about the fraudulent actor in order to prevent future access. If a claim limitations, under their broadest reasonable interpretation, describes Fundamental Economic Principles or Practices but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Activity” grouping of abstract ideas.
Accordingly, the independent claims recite an abstract idea.
Step 2A Prong 2 of the 101 Analysis:
This judicial exception is not integrated into a practical application. In particular, the independent claim(s) recite the following (or similar) additional elements:
Claim 1:
“a non-transitory memory;”
“a processor;”
“at least one application stored in the memory and executable by the processor, wherein the application is in communication with a data store, wherein the application is executed by the processor and causes the processor to perform the steps of:”
“receiving a request to at least one of view a website;”
“…the processor…”
Claim 9:
“…by an application stored in a non-transitory memory executed by a processor …”
“…by the application stored in the non-transitory memory executed by the processor…”
“…by the application stored in the non-transitory memory executed by the processor…”
“…by the application stored in the non-transitory memory executed by the processor…”
“…real-time…”
Claim 14:
“a non-transitory memory;”
“a processor;”
“and at least one application executable by the processor, wherein the at least one application is executed by the processor and causes the processor to:”
“…the at least one application executed by the processor causes the processor to…”
The computer components (non-transitory memory, data store processor, application, and real-time processing) are recited at a high level of generality (i.e. as generic storage, generic processor, and generic real-time processing) such that it amounts to no more than mere instructions to implement the judicial exception on a computer or by using a computer merely as a tool to perform an existing process. These element(s) in combination do not add anything that is not already present when the steps are considered separately. Simply implementing an abstract idea on a computer as a tool to perform an existing process is not indicative of integration into a practical application (See MPEP § 2106.05(f).)
The receiving step(s) are recited at a high-level of generality (i.e., as generally receiving) such that they amounts to no more than mere data gathering which is adding insignificant extra-solution activity. These element(s) in combination do not add anything that is not already present when the steps are considered separately. Simply adding insignificant extra-solution activity is not indicative of integration into a practical application (See MPEP § 2106.05(g).)
Accordingly, these 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.
The independent claims are directed to an abstract idea.
Step 2B of the 101 Analysis:
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 identified in Step 2A Prong 2 (if any) amount to no more than mere instructions to implement the judicial exception on a computer or no more than mere data gathering or data outputting which only adds insignificant extra solution activity to the judicial exception. Accordingly, the Examiner in accordance with MPEP §2106.05(II):
• Carries over their identification of the additional element(s) in the claim from Step 2A Prong Two;
• Carries over their conclusions from Step 2A Prong Two on the considerations discussed in MPEP §§ 2106.05(a) - (c), (e) (f) and (h):
• Re-evaluates any additional element or combination of elements that was considered to be insignificant extra-solution activity per MPEP § 2106.05(g), because if such re-evaluation finds that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that the additional element is no longer considered to be insignificant.
The claim elements which recite additional elements are:
Claim 1:
“a non-transitory memory;”
“a processor;”
“at least one application stored in the memory and executable by the processor, wherein the application is in communication with a data store, wherein the application is executed by the processor and causes the processor to perform the steps of:”
“receiving a request to at least one of view a website;”
“…the processor…”
Claim 9:
“…by an application executed by a processor …”
“…by the application executed by the processor…”
“…by the application executed by the processor…”
“…by the application executed by the processor…”
“…real-time…”
Claim 14:
“a non-transitory memory;”
“a processor;”
“and at least one application executable by the processor, wherein the at least one application is executed by the processor and causes the processor to:”
“…the at least one application executed by the processor causes the processor to…”
Examiner incorporates the corresponding rationale provided in Step 2A Prong Two herein by carrying over their conclusions from Step 2A Prong Two on the considerations discussed in MPEP §§ 2106.05(a) – (c), (e), (f) and (h).
These element(s) in combination do not add anything that is not already present when the steps are considered separately. Adding insignificant extra-solution activity cannot provide an inventive concept when the activities are well-understood routine and conventional. The courts have recognized the following computer functions as well-understood, routine, and conventional functions when they are claimed in a merely generic manner:
(for receiving various data) Receiving or transmitting data over a network, (See MPEP § 2106.05(d)(II)).
The independent claims are not patent eligible.
Dependent Claim(s) 2-8, 10-13 and 15-17 recite limitations that are similar to the abstract idea noted in the independent claims because they further narrow the independent claim(s) which recite one or more judicial exceptions. Accordingly, these claim elements do not serve to confer subject matter eligibility to the claims since they recite abstract ideas.
Claims 4, 7 and 12 further recite enabling/disabling Captcha. The use of Captcha is implemented at a high level of generality (i.e. as simply using the technology) such that it amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use. These element(s) in combination do not add anything that is not already pre-sent when the steps are considered separately. Generally linking the use of the judicial exception to a particular technological environment or field of use is not indicative of integration into a practical application (See MPEP § 2106.05(h).)
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 identified in Step 2A Prong 2 (if any) amount to no more than mere instructions to implement the judicial exception on a computer or no more than mere data gathering or data outputting which only adds insignificant extra solution activity to the judicial exception. Accordingly, the Examiner in accordance with MPEP §2106.05(II):
• Carries over their identification of the additional element(s) in the claim from Step 2A Prong Two;
• Carries over their conclusions from Step 2A Prong Two on the considerations discussed in MPEP §§ 2106.05(a) - (c), (e) (f) and (h):
• Re-evaluates any additional element or combination of elements that was considered to be insignificant extra-solution activity per MPEP § 2106.05(g), because if such re-evaluation finds that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that the additional element is no longer considered to be insignificant.
The claim elements which recite additional elements are:
Claim 4:
“…enabling Captcha…”
Claim 7:
“…disabling Captcha…”
Claim 12:
“…enabling Captcha…”
Examiner incorporates the corresponding rationale provided in Step 2A Prong Two herein by carrying over their conclusions from Step 2A Prong Two on the considerations discussed in MPEP §§ 2106.05(a) – (c), (e), (f) and (h).
These element(s) in combination do not add anything that is not already present when the steps are considered separately. Adding insignificant extra-solution activity cannot provide an inventive concept when the activities are well-understood routine and conventional. The dependent claims recite no elements which are considered as insignificant extra-solution activity.
The claims are not patent eligible.
Examiner’s Note
Examiner notes a search was performed but did not result in a prior art rejection within a reasonable number of references.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hickman (US 2010/0161468 A1) discloses method for authenticating engaging parties in a financial transaction and requesting their information including authentication sound.
Eisen (WO 2014078569 A1) discloses the impact of fake or spoofed sites in financial fraud.
Enache et al. (“Trap application for cyber criminals”) discloses slot traps for stolen cards and the merits of trapping fraudster information for data analysis but does not disclose redirecting a user to a dummy website.
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 ADAM J HILMANTEL whose telephone number is (571)272-8984. The examiner can normally be reached M-F 8:30AM-5:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas can be reached at (571) 270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM HILMANTEL/Examiner, Art Unit 3691
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