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 .
DETAILED ACTION
This office action is in response to an amendment received on 7/10/26 for patent application 19/260,739.
Claims 1 is amended.
Claim 12 is cancelled.
Claims 1-11, 13-20 are pending.
RESPONSE TO ARUGMENTS
Applicant argues#1
The Examiner characterizes the claims as directed to "a commercial interaction. " However, the claims as amended do not merely recite a commercial interaction. Amended Claim 1 recites "maintaining a chargeback database comprising a plurality of customer identifiers, each customer identifier being associated with a particular individual and being unique to the particular individual, the chargeback database further comprising historical chargeback data for each particular individual, the historical chargeback data for each particular individual being linked to the customer identifier associated with the particular individual, wherein the historical chargeback data comprises a historical chargeback request made by the customer using a credit card issued by a different card issuer."
These limitations define a specific cross-issuer data aggregation architecture in which a chargeback database links customer identifiers to historical chargeback data spanning multiple different card issuers. This is not a fundamental economic practice, a legal obligation, or a business relation. Instead, it is a technical solution for structuring and retrieving data across a distributed network of independent card issuers.
Accordingly, the claims do not recite an abstract idea under Step 2A, Prong One, and the eligibility analysis should conclude here.
Examiner Response
Examiner respectfully disagrees.
The limitations (a plurality of customer identifiers, each customer identifier being associated with a particular individual and being unique to the particular individual, further comprising historical chargeback data for each particular individual, the historical chargeback data for each particular individual being linked to the customer identifier associated with the particular individual, wherein the historical chargeback data comprises a historical chargeback request made by the customer using a credit card issued by a different card issuer) is part of the identified abstract idea.
The additional element outside of the abstract idea (the chargeback database) is recited at a high level of generality and is operating in its ordinary capacity and is being used as a tool to implement the steps of the identified abstract idea, see MPEP 2106.05(f).
The rejection is maintained.
Applicant argues#2
Step 2A, Prong Two
Even assuming arguendo that the claims recite an abstract idea, Applicant respectfully submits that the claims integrate any such alleged exception into a practical application.
The Examiner states that the "chargeback database" is "recited at a high level of generality and is being used in its ordinary capacity and [is] being used as a tool for implementing the steps of the identified abstract idea. " (See Office Action, page 5) Applicant respectfully disagrees.
Amended Claim 1 recites "wherein the historical chargeback data comprises a historical chargeback request made by the customer using a credit card issued by a different card issuer. " This cross-issuer chargeback aggregation is not a generic database function. The specification describes that "chargeback requests by a customer may be fraudulently claimed by the customer themself" and that "customer-initiated chargeback fraud has not been well documented. " (See specification, Paragraph [0006])
The specification further describes that the chargeback database stores "historical chargeback data for each individual" such that "the historical chargeback data linked to a particular individual may record all of the chargeback requests that a customer has ever made even with cards that were issued to the customer by different card issuers " (See specification, Paragraph [0020])
As a result, "the system allows different card issuers to search the chargeback database for any customer who has a history of requesting chargebacks regardless of what card issuer or card network was involved in the chargeback. " (See specification, Paragraph [0028])
The claims thus address a specific technological problem in distributed payment networks, namely that without a cross-issuer chargeback database, each card issuer maintains only its own chargeback records, and a customer who engages in chargeback fraud may avoid detection by switching card issuers.
The claimed cross-issuer database solves this problem by maintaining historical chargeback data that spans across different card issuers, enabling a card issuer to retrieve chargeback history that includes requests made through a different card issuer.
The claimed chargeback database solves this problem by maintaining historical chargeback data that spans across different card issuers, enabling a card issuer to retrieve chargeback history that includes requests made through a different card issuer.
This cross-issuer aggregation imposes a meaningful limit on the claims beyond merely "applying" an abstract idea to a generic computer. Conventional chargeback systems maintain chargeback records only within the individual card issuer that received the chargeback request. The claims recite a fundamentally different data architecture - a unified chargeback database linking customer identifiers to historical chargeback data from multiple, different card issuers - such that "the chargeback request at issue [may] involve a financial transaction with one credit card issued by a particular card issuer and yet the historical chargeback data used to make the determination of whether to approve or deny the request may involve chargeback requests made by the customer to different card issuers involving different credit cards associated with different card networks. " (See specification, paragraph [0028]
As such, this is not the "ordinary capacity" of a generic database, but rather it is a specific architectural arrangement that enables cross-issuer visibility into a customer's chargeback history where none previously existed.
Accordingly, the claims are integrated into a practical application under Step 2A, Prong Two.
Examiner Response
Examiner respectfully disagrees.
The specification paras that application refers to are reproduced below:
[0006] In some cases, however, chargeback requests by a customer may be fraudulently claimed by the customer themself. That is, even though the customer may have actually authorized a financial transaction, it is possible that a customer may fraudulently claim that a financial transaction was unauthorized in order to make an illegitimate chargeback request so that the customer can avoid paying for the financial transaction. Although it is understood that some amount of chargeback requests may involve customer fraud as opposed to sophisticated third-party fraud, customer-initiated chargeback fraud has not been well documented and the total amount of chargeback fraud that is caused by customers themselves is not known. However, it is possible that this type of fraud is substantial and imposes costs on the system that are not borne by the perpetrators of such fraud.
[0020] The chargeback database 20 also preferably includes historical chargeback data for each individual 16 in the database 20. That is, each time that a customer 16 makes a request for a chargeback, the card issuer 10 who received the chargeback request may enter the chargeback request into the database 20 by linking the chargeback request to the unique customer identifier since the chargeback database 20 may be accessible by many different card issuers 10. The historical chargeback data linked to a particular individual 16 may record all of the chargeback requests that a customer 16 has ever made even with cards that were issued to the customer 16 by different card issuers 10. In the preferred embodiment, card issuers 10 will have access to a customer's entire historical chargeback data even for chargeback requests made to different card issuers 10 and chargeback requests made with cards associated with different card networks 12. Likewise, since the customer identifier is a unique identifier that does not change due to card changes and the like, the historical chargeback data for an individual 16 can continue to be updated over long periods of time even as a particular individual 16 changes addresses, account numbers, etc
[0028] In either event, the card issuer 10 will typically add details of the chargeback request into the historical chargeback data for the customer 16 in the database 20 for future searches by any card issuer 10 who uses the database 20 (54). Thus, the system allows different card issuers 10 to search the chargeback database 20 for any customer 16 who has a history of requesting chargebacks regardless of what card issuer 10 or card network 12 was involved in the chargeback. As a result, it may be common for the chargeback request at issue to involve a financial transaction with one credit card issued by a particular card issuer 10 and associated with a particular card network 12, and yet the historical chargeback data used to make the determination of whether to approve or deny the request may involve chargeback requests made by the customer 16 to different card issuers 10 involving different credit cards associated with different card networks 12.
Applicant is pointed to MPEP 2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field [R-07.2022]:
If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.
During examination, the examiner should analyze the "improvements" consideration by evaluating the specification and the claims to ensure that a technical explanation of the asserted improvement is present in the specification, and that the claim reflects the asserted improvement
It can be seen from the cited paras of the specification there is no technical explanation of the asserted improvement. The additional element of the (chargeback database) is operating in its ordinary capacity (a database is designed to store records and be searchable), is recited at a high level of generality and is being used as a tool to implement the steps of the identified abstract idea.
Applicant argued the claims present a technical improvement. Examiner does not find this argument persuasive. Applicant’s claims do not improve technology; the underlying technology remains unaffected by the claims. Applicant is addressing a business problem (steps for issuing a new credit card based on historical customer chargeback data) with a business solution. Applicant is merely using existing technology (for its intended purpose) to implement the business solution. Any improvements lie in the abstract idea itself, not in underlying technology.
Therefore there are no additional elements that are indicative of integration into a practical application.
The rejection is maintained.
Applicant argues#3
Step 2B
Even further assuming arguendo that the claims are directed to an abstract idea, Applicant respectfully submits that the claims recite an inventive concept amounting to significantly more than the alleged abstract idea.
The Office Action provides no evidentiary support that the cross-issuer chargeback database recited in amended Claim 1 is well-understood, routine, or conventional. To the contrary, the Examiner acknowledged under the "No Prior Art" section that "the prior art of record neither anticipates nor renders obvious the claimed subject matter of the instant application as a whole either taken alone or in combination. " (See Office Action, page 7). The Examiner further noted that the cited references, US 2018/0174147 to Williams et al. and US 2026/0141389 to Jass et al., do not teach the claimed limitations. (See Office Action, pages 7-8). The Examiner's own finding that no cited reference teaches or suggests the claimed subject matter is consistent with a conclusion that the claimed cross-issuer chargeback database is not well-understood, routine, or conventional. Moreover, the Examiner has provided no evidence - such as publications, patents, or other documentation - establishing that a chargeback database aggregating historical chargeback data comprising "a historical chargeback request made by the customer using a credit card issued by a different card issuer" is well-understood, routine, or conventional activity. Under the 2019 PEG, the Examiner bears the burden of providing such evidence when asserting that additional elements are WURC. The specification confirms that this cross-issuer architecture is a departure from conventional systems, describing that "customer- initiated chargeback fraud has not been well documented and the total amount of chargeback fraud that is caused by customers themselves is not known" and that "[i]mproved systems for documenting such possible fraud would be desirable in the field of credit card processing. " (See specification, paragraphs [0006]-[0007]) Accordingly, the claims satisfy Step 2B.
For the foregoing reasons, Applicant respectfully requests withdrawal of the rejection of Claims 1-11 and 13-20 under 35 U.S.C. § 101.
Examiner Response
Examiner respectfully disagrees.
Applicant misapprehends when a Berkheimer analysis is required under current examination policy. Simply put, Examiner is not required under current Examination policy to evaluate under Step 2B, whether additional elements constitute “well-understood, routine, and conventional activities,” [“WURC activities”] unless an additional element(s) were found to be insignificant extra-solution activity in Step 2A, Prong 2. MPEP § 2106.05(d)(I). Here, the condition precedent was not met and the Non-Final Office Action determined the additional elements were no more than mere instructions to apply the abstract idea exception using a computer. MPEP § 2106.05(f). Thus, Examiner was not required to determine a Berkheimer analysis. MPEP § 2106.05(d)(I). (See Section 101 rejection below).
The rejection is maintained.
Claim Rejections- 35 U.S.C § 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.
4. Claims 1-11, 13-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 is directed to a method, which is a statutory category of invention. (Step 1: YES).
Representative claim 1 recites the limitations of:
A method of issuing a new credit card to a customer, comprising:
the customer providing customer information sufficient to uniquely identify the customer to a card issuer;
maintaining a chargeback database comprising a plurality of customer identifiers, each customer identifier being associated with a particular individual and being unique to the particular individual, the chargeback database further comprising historical chargeback data for each particular individual, the historical chargeback data for each particular individual being linked to the customer identifier associated with the particular individual, wherein the historical chargeback data comprises a historical chargeback request made by the customer using a credit card issued by a different card issuer;
the card issuer searching the chargeback database using the customer
information to determine whether a customer identifier exists in the chargeback
database associated with the customer information;
if a customer identifier exists in the chargeback database associated with the customer information, the card issuer retrieving the historical chargeback data for the customer; and
the card issuer issuing the new credit card to the customer or refusing to issue the new credit card to the customer based on the retrieved historical chargeback data.
These limitations, under their broadest reasonable interpretation, cover performance of
the limitation as certain methods of organizing human activity.
The claim recites elements that are in bold above, which covers performance of the
limitation as a commercial interaction, steps for issuing a new credit card based on historical customer chargeback data
(e.g., method of issuing a new credit card to a customer, comprising: the customer providing customer information sufficient to uniquely identify the customer to a card issuer; maintaining a plurality of customer identifiers,
each customer identifier being associated with a particular individual and being unique to the particular individual, further comprising historical chargeback data for each particular individual, the historical chargeback data for each particular individual being linked to the customer identifier associated with the particular individual, wherein the historical chargeback data comprises a historical chargeback request made by the customer using a credit card issued by a different card issuer ; the card issuer searching the chargeback database using the customer information to determine whether a customer identifier exists in the chargeback database associated with the customer information; if a customer identifier exists in the chargeback database associated with the customer information, the card issuer retrieving the historical chargeback data for the customer; and the card issuer issuing the new credit card to the customer or refusing to issue the new credit card to the customer based on the retrieved historical chargeback data)
If a claim limitation, under its broadest reasonable interpretation, covers performance of
the limitation as a Commercial Interaction, then it falls within the "Certain Methods of
Organizing Human Activity" grouping of abstract ideas.
(Step 2A-Prong 1: YES. The claims are abstract).
This judicial exception is not integrated into a practical application. Limitations that
are not indicative of integration into a practical application include: (1) Adding the words
"apply it" (or an equivalent) with the judicial exception, or mere instructions to implement
an abstract idea on a computer, or merely uses a computer as a tool to perform an
abstract idea (MPEP 2106.05.f), (2) Adding insignificant extra solution activity to the
judicial exception (MPEP 2106.05.g), (3) Generally linking the use of the judicial
exception to a particular technological environment or field of use (MPEP 2106.05.h).
Claim 1 includes the following additional elements:
- A chargeback database
The chargeback database is recited at a high level of generality and is being used in its ordinary capacity and are being used as a tool for implementing the steps of the identified abstract idea, see MPEP 2106.05(f), where applying a computer or using a computer as a tool to perform the abstract idea is not indicative of a practical application.
Accordingly, these additional elements, when considered separately and as an ordered
combination, do not integrate the abstract idea into a practical application because they
do not impose any meaningful limits on practicing the abstract idea
Therefore claim 1 is directed to an abstract idea without a practical
application. (Step 2A-Prong 2: NO. The additional claimed elements are not
integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to
significantly more than the judicial exception because, when considered individually and
as an ordered combination, they do not add significantly more (also known as an
"inventive concept") to the exception. As discussed above with respect to integration of
the abstract idea into a practical application, there are no additional elements recited
in the claim beyond the judicial exception.
Mere instructions to implement an abstract idea, on or with the use of generic computer
components, or even without any computer components, cannot provide an inventive
concept - rendering the claim patent ineligible. Thus claim 1 is not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims 2-11, 13-20 further define the abstract idea that is present in
respective independent claim 1 and thus correspond to Certain Methods
of Organizing Human Activity and hence are abstract for the reasons presented above.
Claims 3,20 further defines the identified abstract idea as recited in claim 1. The additional element of the customer identifiers being encrypted, where the encryption is recited a at a high level of generality, operating in its ordinary capacity, and is being used as a tool to implement the steps of the identified abstract idea, see MPEP 2106.05(f)
Therefore, the dependent claims do not include any additional elements that integrate
the abstract idea into a practical application or are sufficient to amount to significantly
more than the judicial exception when considered both individually and as an ordered
combination. Therefore, the dependent claims (2-11, 13-20) are directed to an abstract
idea. Thus, the claims 1-11, 13-20 are not patent-eligible.
CONCLUSION
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 MOHAMMAD Z SHAIKH whose telephone number is (571)270-3444. The examiner can normally be reached M-T, 9-600; Fri, 8-11, 3-5.
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, BENNETT SIGMOND can be reached at 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MOHAMMAD Z SHAIKH/Primary Examiner, Art Unit 3694 9/14/2026
Prosecution Insights