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 09 June 2025.
Claim(s) 1-20 is/are currently pending and have been examined.
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 1-20 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 method, computer, and non-transitory computer-readable storage media for tokenized account attributes. These are a process, machine, and article of manufacture 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, 13 and 20:
Claims 1, 13 and 20:
“generating a first token for a first account associated with a first authorizing entity computer, the first token associated with a first attribute;”
“generating a second token for a second account associated with a second authorizing entity computer;”
“assigning a first transaction rule to the second token;”
“assigning a first attribute value to the first attribute associated with the first token;”
“receiving a request to check the first attribute value of the first attribute against the first transaction rule; and”
“responsive to the first attribute value of the first attribute satisfying the first transaction rule: transmitting a first validation message….”
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 “authorizing entity computer”, “one or more storage media storing instructions”, “one or more processors configured to execute the instructions to cause the token service computer to perform operations comprising:”, or “One or more non-transitory computer-readable storage media storing instructions that, upon execution by one or more processors of a system, cause the system to perform operations comprising:” nothing in the claims’ elements precludes the steps from practically describing Fundamental Economic Principles or Practices or could practically describe Commercial or Legal Interactions. For example, but for the recited computer language, the limitations in the context of this claim describes Mitigating Risk or could describe sales activities or behaviors. Mitigating Risk is described when generating transaction data and using said data to perform validation checks for transactions thereby mitigating risk of fraud. Sales activities or behaviors is described when generating transactional token data and processing a transaction based on transaction rules associated with said token data. If a claim limitations, under their broadest reasonable interpretation, describes Fundamental Economic Principles or Practices or describes Commercial or Legal Interactions 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:
Claims 1, 13 and 20:
“…to the second authorizing entity computer”
Claim 13:
“one or more storage media storing instructions;”
“one or more processors configured to execute the instructions to cause the token service computer to perform operations comprising:”
Claim 20:
“One or more non-transitory computer-readable storage media storing instructions that, upon execution by one or more processors of a system, cause the system to perform operations comprising:”
The computer components (computers, storage media, and processors) are recited at a high level of generality (i.e. as generic computers, generic storage, and generic processors) 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).)
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:
Claims 1, 13 and 20:
“…to the second authorizing entity computer”
Claim 13:
“one or more storage media storing instructions;”
“one or more processors configured to execute the instructions to cause the token service computer to perform operations comprising:”
Claim 20:
“One or more non-transitory computer-readable storage media storing instructions that, upon execution by one or more processors of a system, cause the system to perform operations comprising:”
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 claims recite no elements which are considered to be insignificant extra-solution activity.
The independent claims are not patent eligible.
Dependent Claim(s) 2-12 and 14-19 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.
The claims are not patent eligible.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Dill et al. (US 2015/0032627 A1 hereinafter Dill; Examiner notes while this publication is commonly owned by Visa, its publication date renders it as valid 102(a)(1) art).
Claim 1
A method performed by a token service computer, the method comprising:
generating a first token for a first account associated with a first authorizing entity computer, the first token associated with a first attribute; (Dill discloses token attributes assigned to tokens that are registered to consumers and merchants. See at least paragraphs [0033]-[0034], [0040]-[0042] and [0055].)
generating a second token for a second account associated with a second authorizing entity computer; (Dill discloses token attributes assigned to tokens that are registered to consumers and merchants. See at least paragraphs [0033]-[0034] , [0040]-[0042] and [0055].)
assigning a first transaction rule to the second token; (Dill discloses providing each tokens’ attributes wherein token attributes can govern how a token corresponding to a PAN may be subsequently used (i.e. transaction rules). See at least paragraph [0041].)
assigning a first attribute value to the first attribute associated with the first token; (Dill discloses token attributes assigned to tokens that are registered to consumers and merchants. See at least paragraphs [0033]-[0034] , [0040]-[0042] and [0055].)
receiving a request to check the first attribute value of the first attribute against the first transaction rule; and (Dill discloses providing each tokens’ attributes wherein token attributes can govern how a token corresponding to a PAN may be subsequently used (i.e. transaction rules). See at least paragraph [0041].)
responsive to the first attribute value of the first attribute satisfying the first transaction rule: (Dill discloses providing each tokens’ attributes wherein token attributes can govern how a token corresponding to a PAN may be subsequently used (i.e. transaction rules). See at least paragraph [0041].)
transmitting a first validation message to the second authorizing entity computer. (Dill discloses providing each tokens’ attributes wherein token attributes can govern how a token corresponding to a PAN may be subsequently used (i.e. transaction rules). See at least paragraph [0041]. Dill discloses validating tokens for transactions to control the use of sensitive information. See at least paragraph [0053]. Dill discloses accepting, processing, authorizing, reporting, and routing tokens by the payment system entities. See at least paragraph [0035]-[0036].)
Claim 2
The method of claim 1, further comprising:
assigning a second attribute value to a second attribute associated with the second token; (Dill discloses token attributes assigned to tokens that are registered to consumers and merchants. See at least paragraphs [0033]-[0034], [0040]-[0042] and [0055].)
assigning a second transaction rule to the first token; and (Dill discloses providing each tokens’ attributes wherein token attributes can govern how a token corresponding to a PAN may be subsequently used (i.e. transaction rules). See at least paragraph [0041].)
wherein responsive to the first attribute value of the first attribute satisfying the first transaction rule: (Dill discloses providing each tokens’ attributes wherein token attributes can govern how a token corresponding to a PAN may be subsequently used (i.e. transaction rules may be used for either or both tokens). See at least paragraph [0041].)
checking the second attribute value of the second attribute against the second transaction rule; and (Dill discloses providing each tokens’ attributes wherein token attributes can govern how a token corresponding to a PAN may be subsequently used (i.e. transaction rules). See at least paragraph [0041].)
responsive to the second attribute value of the second attribute satisfying the second transaction rule: (Dill discloses providing each tokens’ attributes wherein token attributes can govern how a token corresponding to a PAN may be subsequently used (i.e. transaction rules). See at least paragraph [0041].)
transmitting a second validation message to the first authorizing entity computer. (Dill discloses providing each tokens’ attributes wherein token attributes can govern how a token corresponding to a PAN may be subsequently used (i.e. transaction rules). See at least paragraph [0041]. Dill discloses accepting, processing, authorizing, reporting, and routing tokens by the payment system entities. See at least paragraph [0035]-[0036].)
Claim 3
The method of claim 2, further comprising:
responsive to the second attribute value of the second attribute satisfying the second transaction rule, performing a transaction between the first authorizing entity computer and the second authorizing entity computer. (Dill discloses providing each tokens’ attributes wherein token attributes can govern how a token corresponding to a PAN may be subsequently used (i.e. transaction rules) and authorizing purchase with said tokens. See at least paragraphs [0033] and [0041].)
Claim 4
The method of claim 2, wherein the second validation message includes the second attribute. (Dill discloses accepting, processing, authorizing, reporting, and routing tokens by the payment system entities. See at least paragraph [0035]-[0036]. Dill discloses any entity associated with the token may determine and/or provide the token attributes associated with a particular token. See at least paragraph [0055].)
Claim 5
The method of claim 2, wherein at least one of the first attribute is included in a first set of one or more attributes or the second attribute is included in a second set of one or more attributes. (Dill discloses token attributes (i.e. multiple attributes) assigned to tokens that are registered to consumers and merchants. See at least paragraphs [0033]-[0034] , [0040]-[0042] and [0055].)
Claim 6
The method of claim 1, wherein the first transaction rule is included in a set of one or more transaction rules. (Dill discloses providing each tokens’ attributes wherein token attributes can govern how a token corresponding to a PAN may be subsequently used (i.e. multiple transaction rules). See at least paragraph [0041].)
Claim 7
The method of claim 1, wherein the first attribute includes at least one of: a transaction attribute or an account attribute. (Dill discloses attribute including at least PAN (account attribute), number of tokens (i.e. account attribute), type of cards (i.e. account and transaction attribute), or transaction life-cycle expiration period (i.e. transaction attribute). See at least paragraphs [0041]-[0043].)
Claim 8
The method of claim 1, wherein the first transaction rule identifies a value to check against the first attribute. (Dill discloses tokens restricted in use based on transaction amount threshold or number of uses (i.e. numeric value check) or based on merchant restrictions (i.e. categoric value check). See at least paragraphs [0058], [0166]-[0167] and [0256].)
Claim 9
The method of claim 1, wherein the first attribute is indicated as restricted from sharing with the second authorizing entity computer. (Dill discloses tokens restricted in use based on merchant, transaction channel, domain, or any other relevant information for restrictions (i.e. one entity indicated as restricted from sharing with the second entity). See at least paragraphs [0058], [0166]-[0167] and [0256].)
Claim 10
The method of claim 1, wherein the first validation message includes the first attribute value. (Dill discloses accepting, processing, authorizing, reporting, and routing tokens by the payment system entities. See at least paragraph [0035]-[0036]. Dill discloses any entity associated with the token may determine and/or provide the token attributes associated with a particular token. See at least paragraph [0055].)
Claim 11
The method of claim 1, wherein the method further comprises:
generating a third token for the second account associated with the second authorizing entity computer; and (Dill discloses one PAN or account may have multiple tokens associated with it. See at least paragraph [0053].)
assigning a second transaction rule to the third token. (Dill discloses providing each tokens’ attributes wherein token attributes can govern how a token corresponding to a PAN may be subsequently used (i.e. multiple transaction rules). See at least paragraph [0041].)
Claim 12
The method of claim 1, wherein the method further comprises:
generating a third token for the first account associated with the first authorizing entity computer; and (Dill discloses one PAN or account may have multiple tokens associated with it. See at least paragraph [0053].)
assigning a second attribute to the third token. (Dill discloses one PAN or account may have multiple tokens associated with it. See at least paragraph [0053]. Dill discloses token attributes assigned to tokens that are registered to consumers and merchants. See at least paragraphs [0033]-[0034] , [0040]-[0042] and [0055].)
Claim 13
A token service computer comprising:
one or more storage media storing instructions; and (Dill discloses embodiment on one or more computer-readable storage media storing instructions executable by a processor. See at least paragraphs [0294].)
one or more processors configured to execute the instructions to cause the token service computer to perform operations comprising: (Dill discloses embodiment on one or more computer-readable storage media storing instructions executable by a processor. See at least paragraphs [0294].)
…
The remainder of Claim 13 is substantially similar to the corresponding elements in Claim 1 and is therefore rejected using similar reasoning.
Claim 14
Claim 14 is substantially similar to the corresponding elements in Claim 8 and is therefore rejected using similar reasoning.
Claim 15
Claim 15 is substantially similar to the corresponding elements in Claim 9 and is therefore rejected using similar reasoning.
Claim 16
Claim 16 is substantially similar to the corresponding elements in Claim 10 and is therefore rejected using similar reasoning.
Claim 17
Claim 17 is substantially similar to the corresponding elements in Claim 11 and is therefore rejected using similar reasoning.
Claim 18
Claim 18 is substantially similar to the corresponding elements in Claim 12 and is therefore rejected using similar reasoning.
Claim 19
The token service computer of claim 13, wherein the first transaction rule is assigned based on an indication received from the second authorizing entity computer. (Dill discloses terms and conditions (i.e. rules) associated with a token may be updated through token interface accessed through issuer computer (i.e. indication received from the second authorizing entity computer). See at least paragraph [0132].)
Claim 20
One or more non-transitory computer-readable storage media storing instructions that, upon execution by one or more processors of a system, cause the system to perform operations comprising: (Dill discloses embodiment on one or more non-transitory computer-readable storage media storing instructions executable by a processor. See at least paragraphs [0294].)
…
The remainder of Claim 20 is substantially similar to the corresponding elements in Claim 1 and is therefore rejected using similar reasoning.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Carpenter et al. (WO 2018/031914 A1) discloses token data that may be stored at a token vault and authorizing a request based on additional data associated with a token.
Tan et al. (“FCToken: A Flexible Framework for Blockchain-Based Compliance Tokenization”) discloses token based compliance for blockchain networks.
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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