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 Office Action is in response to the Application filed July 14, 2025. Claims 1-13 and 15-21 are pending in this case. Claims 1-4, 6-13, and 15 are amended via preliminary amendment. Claim 14 is canceled via preliminary amendment. Claims 16-21 are added via the same preliminary amendment.
Priority
This application is the U.S. National Stage Application of International Application No. PCT/US2024/012329 filed January 22, 2024, which claims the benefit of European Patent Application No. 23155012.0, filed February 6, 2023.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on Jul 14, 2025, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 -13 and 15-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims fall within at least one of the four categories of patent eligible subject matter because the claims 1-12 and 16-21 are directed to a method, claim 13 is directed to a system or apparatus, and claim 15 is directed to a non-transitory computer readable storage medium.
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is integrated into a practical application. Examples of abstract ideas include mathematical concepts, certain methods of organizing human activity and mental processes (Alice Corporation Pty. Ltd. V. CLS Bank International, et al. US Supreme directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Court, No. 13-298, June 19, 2014; Federal Register, Vol. 84, No. 4, Mon, 7 Jan 2019, Pg. 50 - 57).
In the instant case claims 1-12 and 16-21 are directed to a method, claim 13 is directed to a system or apparatus, and claim 15 is directed to a non-transitory computer readable storage medium. Therefore, these claims fall within the four statutory categories of invention.
Claim 1 recites data management for transaction validation, which is an abstract idea. Specifically, the claims recite (in part) "receiving . . . a request to validate a transaction . . .determining device identification . . .of the payment device . . . receiving . . . a transaction authentication value . . . validating . . . authentication value . . .authenticating the payment device . . .provisionally validating the transaction", which is grouped within the "Certain methods of organizing human activity", specifically, "commercial or legal interactions...", grouping(s) of abstract ideas because the claims involve data management in prong one of Step 2A (see MPEP 2106). Claims 13 and 15 are rejected under similar reasoning.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A, the additional element(s) of the claim(s) such as the physical terminal and the payment device, the data processing system, and non-transitory computer readable storage medium merely serve as tools to perform the abstract idea and/or generally link the use of a judicial exception to a particular technological environment. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e., automate and/or implement) the act of data management for transaction validation. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limit(s) on practicing the 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, the additional element amount to no more than using a computer or processor to automate and/or implement the abstract idea. Viewed as a whole, the elements recited in the claims merely describe data management for transaction validation using computer technology. Considered separately and as an ordered combination, it does not add significantly more (also known as an "inventive concept") to the exception. Which, according to the MPEP, cannot provide significantly more than the abstract idea itself (MPEP 2106.05). Hence, the claim is not patent eligible.
Dependent claims 2-12, and 16-21 further describe the abstract idea within the independent claims, and do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea.
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 (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.
Claim(s) 1-3, 6, and 11-13, 15-21 are rejected under 35 U.S.C. 103 as being unpatentable over McCarter et al (US 2019/0312883) in view of Grassadonia et al (US 2022/0188782).
Regarding claims 1, 13, and 15 –
McCarter discloses an off-line distributed transaction validation method (par 159) comprising the steps:
receiving, at a physical terminal, a request to validate a transaction from a payment device; (par 180, fig6A)
determining device identification data of the payment device; (par 181, 32, 150)
determining if the payment device stores data specific to an operator; (par 150, 181, 32)
receiving a local transaction authentication value from the payment device; (par 32, 206)
validating the local transaction authentication value; (par 32)
authenticating the payment device. (par 32-33).
Grassadonia discloses, as McCarter does not specifically disclose, provisionally validating the transaction. (par 30, 63)
It would be obvious to one of ordinary skill in the art to combine McCarter with the provisional authorization of Grassadonia in order to reduce the number of fraudulent transactions associated with the payment proxy while achieving a transaction experience that is seamless and convenient, particularly in scenarios where a payment object reader is mobile. (Grassadonia, par 31)
Regarding claim 2 –
McCarter disclose wherein determining device identification data of the payment device comprises:
extracting device identification data from a memory of the payment device. (par 150, 206)
Regarding claims 3 and 16 –
McCarter discloses wherein authenticating the payment device comprises, in response to determining that data specific to the operator is not stored in the payment device: calculating an operator authentication value of the device identification data; (par 200)
storing the operator authentication value on the payment device; (par 200) and
considering the payment device as if it has been authenticated. (par 200)
Regarding claim 6 –
McCarter discloses, wherein, when the local transaction authentication value is not valid, the method further comprises: rejecting the payment device. (par 197-198)
Regarding claim 17 –
McCarter discloses wherein determining if the payment device stores data specific to the operator comprises interrogating the payment device to determine if the payment device stores data specific to the operator. (par 200)
Claims 4, 5, 10, 12 are rejected under 35 U.S.C. 103 as being unpatentable over McCarter et al (US 2019/0312883) in view of Grassadonia et al (US 2022/0188782) and further in view of Dixon et al (US 2011/0016054)
Regarding claim 4 –
Dixon discloses prior to authentication of the payment device: determining that the device identification data is present on a deny list; (par 44) and
rejecting the payment device. (par 44-46)
It would be obvious to one of ordinary skill in the art to combine McCarter with the “deny” list of Dixon in order to reduce the number of fraudulent transactions associated with the payment proxy while achieving a transaction experience that is seamless and convenient, particularly in scenarios where a payment object reader is mobile.
Regarding claim 5 –
McCarter discloses wherein it is determined that the payment device stores data specific to the operator.( par 150, 181, 32)
Dixon discloses when it is s determined the device identification data is present on the deny list, the method further comprises rejecting the payment device and invalidating the data specific to the operator on the payment device. (par 44-46)
It would be obvious to one of ordinary skill in the art to combine McCarter with the “deny” list of Dixon in order to reduce the number of fraudulent transactions associated with the payment proxy while achieving a transaction experience that is seamless and convenient, particularly in scenarios where a payment object reader is mobile.
Regarding claim 10 –
Dixon discloses wherein, when the device identification data is present on the deny list, the method further comprising the steps: determining a reason for the device identification data being present on the deny list is rectified; (par 44-46) and
removing the device identification data from the deny list. (par 44-46)
It would be obvious to one of ordinary skill in the art to combine McCarter with the “deny” list of Dixon in order to reduce the number of fraudulent transactions associated with the payment proxy while achieving a transaction experience that is seamless and convenient, particularly in scenarios where a payment object reader is mobile.
Regarding claim 12 –
Dixon teaches wherein the physical terminal is one of a plurality of physical terminals in a network of physical terminals (par 7-8), each of the plurality of physical terminals locally store a deny list, and the deny list is periodically updated. (par 44-46)
It would be obvious to one of ordinary skill in the art to combine McCarter with the “deny” list of Dixon in order to reduce the number of fraudulent transactions associated with the payment proxy while achieving a transaction experience that is seamless and convenient, particularly in scenarios where a payment object reader is mobile.
Regarding claim 21
Dixon discloses wherein, when the transaction is refused, the method further comprises the step of adding the device identification data to a deny list. (par 44-46)
It would be obvious to one of ordinary skill in the art to combine McCarter with the “deny” list of Dixon in order to reduce the number of fraudulent transactions associated with the payment proxy while achieving a transaction experience that is seamless and convenient, particularly in scenarios where a payment object reader is mobile.
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over McCarter et al (US 2019/0312883) in view of Grassadonia et al (US 2022/0188782) and further in view of Hammad et al (US 2008/0203170)
McCarter in view of Grassadonia discloses as above.
Regarding claim 7 -
McCarter discloses the payment device is an NFC enabled device, the receiving and extracting of data is carried out via NFC, and the method is initiated by bringing the NFC enabled device within an NFC operational distance of an NFC transceiver of the terminal, (par 19, 20, 27, 53)
wherein the method further comprises the step of allowing access via the transit terminal following the provisional validation of the transaction.
Hammad discloses wherein the method is carried out by a transit terminal, the operator is a transit operator, (par 33, 34) wherein the method further comprises the step of allowing access via the transit terminal (par 3, 7)
Grassadonia discloses, as McCarter and Hammad do not specifically disclose, provisionally validating the transaction and granting the access or other transaction following the provisional validation of the transaction. (par 30, 63)
It would be obvious to one of ordinary skill in the art to combine McCarter with the provisional authorization of Grassadonia and the transit fare devices of Hammad in order to reduce the number of fraudulent transactions associated with the payment proxy while achieving a transaction experience that is seamless and convenient, particularly in scenarios where a payment object reader is mobile and for a greater economy in the use of technical resources.
Regarding claims 8 and 19 –
Grassadonia discloses receiving a remote transaction authentication value from the payment device along with the local transaction authentication value; (par 128, 143, 153)
receiving, from a host system of an issuer of payment credentials on the payment device, a determination to validate or refuse the remote transaction authentication value; (par 61) and
validating or refusing the transaction according to the received determination. (par 61, 85, 108)
It would be obvious to one of ordinary skill in the art to combine McCarter with the provisional authorization of Grassadonia in order to reduce the number of fraudulent transactions associated with the payment proxy while achieving a transaction experience that is seamless and convenient, particularly in scenarios where a payment object reader is mobile. (Grassadonia, par 31)
Regarding claim 9 –
Grassadonia discloses, wherein the validating or refusing of the transaction is carried out after transaction has been allowed. (par 30, 63)
Hammad discloses wherein the transaction constitutes access via a transit terminal. (par 3, 7))
It would be obvious to one of ordinary skill in the art to combine McCarter with the provisional authorization of Grassadonia and the transit fare devices of Hammad in order to reduce the number of fraudulent transactions associated with the payment proxy while achieving a transaction experience that is seamless and convenient, particularly in scenarios where a payment object reader is mobile and for a greater economy in the use of technical resources.
Regarding claim 18 –
Hammad discloses wherein the device identification data is an account identifier or a cryptographic public key. (par 66)
It would be obvious to one of ordinary skill in the art to combine McCarter with the transit fare devices of Hammad in order to reduce the number of fraudulent transactions associated with the payment proxy while achieving a transaction experience that is seamless and convenient, particularly in scenarios where a payment object reader is mobile and for a greater economy in the use of technical resources.
Regarding claim 20 –
Grassadonia discloses the step of requesting the remote transaction authentication value prior to the step of receiving the remote transaction authentication value from the payment device. (par 153)
It would be obvious to one of ordinary skill in the art to combine McCarter with the provisional authorization of Grassadonia in order to reduce the number of fraudulent transactions associated with the payment proxy while achieving a transaction experience that is seamless and convenient, particularly in scenarios where a payment object reader is mobile. (Grassadonia, par 31)
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over McCarter et al (US 2019/0312883) in view of Grassadonia et al (US 2022/0188782) and further in view of Dolev et al (US 2023/0186293).
McCarter in view of Grassadonia teaches as above.
Regarding claim 11 -
Dolev discloses wherein each local determination of the operator authentication value of the device identification data is performed within a secure environment (par 150) using at least one symmetric quantum resistant algorithm. (par 20-26)
It would be obvious for one of ordinary skill in the art to combine McCarter and Grassadonia with Dolev for a more secure transaction through an additional level of secrecy as in Dolev. (abs)
Conclusion
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/Cristina Owen Sherr/ Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697
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