DETAILED ACTION
The following NON-FINAL Office action is in response to Application filed on February 25, 2025 for application 19063079
Acknowledgements
Claims 4-20 have been canceled
Claims 1-3 and 16-21 have been rejected and examined.
Notice of Pre-AIA or AIA Status
The present application, filed on or after December 13, 2013, is being examined under the first inventor to file provisions of the AIA .
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 1-3 and 16-21 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 1-3 are directed to a method, claims 16-18 are directed to a system and claims 19-21 are directed to a non-transitory computer readable medium. Therefore, these claims fall within the four statutory categories of invention.
The claims recite issuing and replacing account credentials which is an abstract idea. Specifically, the claim recites “issuing a first financial instrument to a customer, wherein the first financial instrument is a numberless physical financial instrument having a first primary account number, the first primary account number stored on the first financial instrument, wherein the first financial instrument is restricted to in-person transactions; issuing a second financial instrument to a wallet for the customer …, wherein the second financial instrument has a second primary account number that is different from the first primary account number; receiving a notification that the first financial instrument or the second financial instrument has been lost or compromised; in response to the first financial instrument being lost or compromised, reissuing, the first financial instrument with a third primary account number, wherein the second primary account number for the second financial instrument is unchanged; and in response to the second financial instrument being lost or compromised, reissuing, the second financial instrument with a fourth primary account number, wherein the first primary account number for the first financial instrument is unchanged.” 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, classified under “fundamental economic principles or practices” classified under “mitigating risk” (See MPEP 2106, specifically 2106.04(a)) because – for example, in this case, the claims involve a series of steps for creating or issuing a plurality of accounts with an customer identifier and reissuing or replacing accounts in response to an account being either compromised or lost. Accordingly, the claim recites an abstract idea (See MPEP 2106, specifically 2106.04(a)).
This judicial exception is not integrated into a practical application because the additional elements of the claims such as the use of a payment device or a customer electronic device, a financial institution electronic device, a chip on the first financial instrument and an electronic wallet as tools to perform an abstract idea and/or generally link the use of a judicial exception to a particular technological environment (See MPEP 2106, specifically 2106.04(d)). [The use of a payment device or a customer electronic device, a financial institution electronic device, a chip on the first financial instrument and an electronic wallet to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment] does not render the claim patent eligible because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. Specifically, the payment device or a customer electronic device, a financial institution electronic device, a chip on the first financial instrument and an electronic wallet perform the steps or functions of “issuing a first financial instrument to a customer, wherein the first financial instrument is a numberless physical financial instrument having a first primary account number, the first primary account number stored on the first financial instrument, wherein the first financial instrument is restricted to in-person transactions; issuing a second financial instrument to a wallet for the customer …, wherein the second financial instrument has a second primary account number that is different from the first primary account number; receiving a notification that the first financial instrument or the second financial instrument has been lost or compromised; in response to the first financial instrument being lost or compromised, reissuing, the first financial instrument with a third primary account number, wherein the second primary account number for the second financial instrument is unchanged; and in response to the second financial instrument being lost or compromised, reissuing, the second financial instrument with a fourth primary account number, wherein the first primary account number for the first financial instrument is unchanged.”. The additional claim elements are not indicative of integration into a practical application, because the claims 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 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 claims 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, specifically 2106.05), the additional elements of a payment device or a customer electronic device, a financial institution electronic device, a chip on the first financial instrument and an electronic wallet, to perform the steps amounts to no more than using payment device or a customer electronic device, a financial institution electronic device, a chip on the first financial instrument and an electronic wallet to automate and/or implement the abstract idea of issuing and replacing account credentials. As discussed above, taking the claim elements separately, the payment device or a customer electronic device, a financial institution electronic device, a chip on the first financial instrument and an electronic wallet performs the steps of Claim 1. 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 the concept of issuing and replacing account credentials. 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 payment device or a customer electronic device, a financial institution electronic device, a chip on the first financial instrument and an electronic wallet 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.
Dependent claims describe receiving a PIN, assigning the personal identification number to both the first financial instrument and the second financial instrument and receiving and assigning, by the financial institution computer program, a changed personal identification number for one of the first financial instrument and the second financial instrument further describing the abstract idea of issuing and replacing account credentials. 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. Therefore, the dependent claims are also not patent eligible.
Claim Rejections - 35 USC § 103
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 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 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 of this title, 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.
Claims 1-3 and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Harkey et al. (US 2015/0254646 A1) in view of RULE et al. (US 2020/0184462 A1)
Regarding Claims 1, 16 and 19, Harkey discloses a method for payment device issuance, lifecycle management, and use, comprising:
issuing, by a financial institution computer program for a financial institution, a first financial instrument to a customer, wherein the first financial instrument is a numberless physical financial instrument having a first primary account number, the first primary account number stored in a chip on the first financial instrument, wherein the first financial instrument is restricted to in-person transactions (¶0059, ¶0060, ¶0071)
issuing, by the financial institution computer program, a second financial instrument to an electronic wallet for the customer as a digital financial instrument, wherein the second financial instrument has a second primary account number that is different from the first primary account number (¶0028, ¶0031)
receiving, by the financial institution computer program, a notification that the first financial instrument or the second financial instrument has been lost or compromised (¶0061-¶0064)
in response to the first financial instrument being lost or compromised, reissuing, by the financial institution computer program, the first financial instrument with a third primary account number, wherein the second primary account number for the second financial instrument is unchanged; and (¶0057, ¶0068, ¶0070-¶0073)
Harkey does not disclose: in response to the second financial instrument being lost or compromised, reissuing, by the financial institution computer program, the second financial instrument with a fourth primary account number, wherein the first primary account number for the first financial instrument is unchanged.
RULE however discloses:
in response to the second financial instrument being lost or compromised, reissuing, by the financial institution computer program, the second financial instrument with a fourth primary account number, wherein the first primary account number for the first financial instrument is unchanged (¶0032-¶0034, ¶0045
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Harkey to include “in response to the second financial instrument being lost or compromised, reissuing, by the financial institution computer program, the second financial instrument with a fourth primary account number, wherein the first primary account number for the first financial instrument is unchanged”, as disclosed in RULE, in order to provide a system for reissuing or otherwise altering information stored on contactless cards (see RULE ¶0002).
Regarding Claims 2, 17 and 20, Harker discloses
receiving, by the financial institution computer program, a personal identification number for the first financial instrument or the second financial instrument; (¶0028, ¶0031, ¶0093)
assigning, by the financial institution computer program, the personal identification number to both the first financial instrument and the second financial instrument; (¶0028, ¶0031)
receiving, by the financial institution computer program, a changed personal identification number for one of the first financial instrument and the second financial instrument; and (¶0031)
assigning, by the financial institution computer program, the changed personal identification number to both the first financial instrument and the second financial instrument (¶0028, ¶0031)
Regarding Claims 3, 18 and 21, the combination of Harkey and RULE discloses the invention as above.
RULE further discloses wherein the first financial instrument and the second financial instrument are associated with a logical financial instrument identifier (¶0034)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Harkey to include “wherein the first financial instrument and the second financial instrument are associated with a logical financial instrument identifier”, as disclosed in RULE, in order to provide a system for reissuing or otherwise altering information stored on contactless cards (see RULE ¶0002).
Conclusion
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/ZEHRA RAZA/ Examiner, Art Unit 3697
/JOHN W HAYES/ Supervisory Patent Examiner, Art Unit 3697