Detailed Action
Acknowledgements
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the application filed on July 22, 2025.
Claims 1-16 are pending.
Claims 1-16 are examined.
This Office Action is given Paper No. 20260304 for references purposes only.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. The instant application claims the benefit of application 17/876,140.
Information Disclosure Statement
The Information Disclosure Statement filed on July 22, 2025 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
Drawings
Figure 4 is objected to because the text is illegible. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 6 and 14 are objected to because they recite “merchant identification value, and issuer identification value.” Examiner assumes that Applicant intended “the merchant identification value, and the issuer identification value.” Appropriate correction is required.
Claim Rejections - 35 USC § 112b
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites “a merchant identification value associated with the merchant system.” There is lack of antecedent basis for the term “the merchant system.” For purposes of applying the prior art only, Examiner will interpret as “a merchant system.”
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 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 2A Prong 1: The claims recite an abstract idea of pre-authorizing a payment transaction, which is a certain method of organizing human activity (e.g. fundamental economic principles or practices including hedging, insurance, mitigating risk; commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, business relations; managing personal behavior or relationships or interactions between people including social activities, teaching, and following rules or instructions).
Claim 1, representative of claim 9, includes the following limitations:
Receiving a first data set that comprises a second data set (1) that is appended with an acquirer identification value and (2) that is signed with a first digital signature;
Verifying the first digital signature using a first public key of a first key pair associated with the acquirer identification value;
Extracting the second data set from the first data set, wherein the second data set comprises a third data set (1) that is appended with a merchant identification value and (2) that the merchant system received from a user device;
Extracting the third data set from the second data set, wherein the third data set comprises transaction data and a unique value by an issuer system, wherein the unique value is a digitized surrogate value of a transaction account number and an issuer identification value;
Identifying an issuing computing system based on the issuer identification value.
Step 2A Prong 2: The claim limitations recite the following additional elements that are beyond the judicial exception:
processing server;
an acquirer system;
merchant system;
user device;
issuer system;
issuing computing system;
Transmitting a fourth data set to the issuing computing system.
These additional elements are not indicative of integration into a practical application because:
They add the words “apply it” (or an equivalent) with the judicial exception, or are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. See MPEP 2106.05(f).
They add insignificant extra-solution activity to the judicial exception. Note that “extra-solution activity” can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity can include both pre-solution and post-solution activity. An example of pre-solution activity is a step of gathering data for use in a claimed process. An example of post-solution activity is an element that is not integrated into the claim as whole. See MPEP 2106.05(g).
Step 2B: The claim limitations do not recite additional elements, or an ordered combination of additional elements, that are sufficient to amount to significantly more than the judicial exception.
As discussed with respect to step 2A prong 2 above, the additional elements of “processing server”, “an acquirer system”, “merchant system”, “user device”, “issuer system”, and “issuing computing system” are mere instructions to apply an exception, and do not integrate a judicial exception into a practical application at step 2A or provide an inventive concept at step 2B.
According to the 2019 PEG, a conclusion that an additional element is mere instructions to apply an exception under step 2A should be re-evaluated at step 2B. Thus, the additional elements of “processing server”, “an acquirer system”, “merchant system”, “user device”, “issuer system”, and “issuing computing system” are re-evaluated to determine whether they constitute significantly more. Examiner finds that the additional elements of “processing server”, “an acquirer system”, “merchant system”, “user device”, “issuer system”, and “issuing computing system” are simply the use of a computer in its ordinary capacity and do not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262 and MPEP 2106.05(f). For example, the additional elements only provide a result-oriented solution and lack details as to how the computer performs the modifications, which is equivalent to “apply it”. See Alice Corp. v. CLS Bank, 134 S. Ct. 2347, 2357 and MPEP 2106.05(f).
As discussed with respect to step 2A prong 2 above, the additional element of “transmitting a fourth data set to the issuing computing system” is extra solution activity that does not integrate a judicial exception into a practical application at step 2A or provide an inventive concept at step 2B.
According to the 2019 PEG, a conclusion that an additional element is insignificant extra solution activity under step 2A should be re-evaluated at step 2B. The limitation “transmitting a fourth data set to the issuing computing system” is re-evaluated to determine whether it constitutes well-understood, routine, and conventional activity in the field. The “transmitting of data” is well-understood, routine, and conventional in the field. See Symantec, TLI Communications, and MPEP 2106.05(d). Thus, a conclusion that the limitation “transmitting a fourth data set to the issuing computing system” is well-understood, routine, and conventional is supported under Berkheimer.
Therefore, when considering all the additional claim elements both individually and as an ordered combination, Examiner finds that the claim does not amount to significantly more than the exception.
The dependent claims fail to cure this deficiency and are rejected accordingly.
Claim 2 recites verifying an acquirer value corresponds to the acquirer identification value, which is insignificant extra-solution activity (e.g. selecting a particular data source or type of data to be manipulated). See Electric Power Group, and MPEP 2106.05(g).
Claim 3 recites encrypting the first data set with a second public key and decrypting using a private key, which is insignificant extra-solution activity (e.g. selecting a particular data source or type of data to be manipulated). See Electric Power Group, and MPEP 2106.05(g).
Claim 4 recites encrypting using a public key of the issuing computing system, which is insignificant extra-solution activity (e.g. selecting a particular data source or type of data to be manipulated). See Electric Power Group, and MPEP 2106.05(g).
Claim 5 recites the acquirer identification value, merchant identification value, and issuer identification value have an identifier and associated public key, which is merely describing data and further defining the abstract idea.
Claim 6 recites the acquirer identification value, merchant identification value, and issuer identification value are signed using a private key, which is insignificant extra-solution activity (e.g. selecting a particular data source or type of data to be manipulated). See Electric Power Group, and MPEP 2106.05(g).
Claim 7 recites the transaction data includes tokenized payment account data, which is merely describing data and further defining the abstract idea.
Claim 8 recites the tokenized payment account data is digitally signed, which is merely describing data and further defining 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 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, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-16 are rejected under 35 U.S.C. 103(a) as being unpatentable over Safak (US 2019/0180275) in view of Gaddam et al. (US 2022/0114585).
Claims 1, 9
Safak discloses:
receiving, by a receiver of a processing server, a first data set that is comprised of at least a second data set (merchant signature, see [0033]) (1) that is appended with an acquirer identification value (e.g. bank id number, see [0031]), and (2) the first data set is signed with a first digital signature (digitally sign the checksum, see [0030]) of an acquirer system;
performing, by the processing server, pre-authorization of the payment transaction by verifying, by a verification module of the processing server, the first digital signature (verify the signature of the checksum, see [0033]) using a first public key (account public key, see [0033]) of a first cryptographic key pair associated with the acquirer identification value;
after verifying the first digital signature of the acquirer system, extracting the second data set from the first data set, wherein the second data set is comprised of at least a third data set (transaction information, e.g. amount, see [0031, 0033]) (1) that is appended with a merchant identification value (merchant signature, see [0033]) associated with the merchant system, and (2) that the merchant system received from a user device;
extracting, from the extracted second data set, the third data set including at least transaction data (transaction information, see [0031, 0033]) for the payment transaction… and a second portion includes an issuer identification value (issuer identification number, see [0031]) associated with the issuer system; and
identifying, by a processor of the processing server, an issuing computing system (appropriate issuing institution, see [0036]) based on the issuer identification value; and
transmitting, by a transmitter of the processing server, a fourth data set (transaction message, blockchain address, see [0037, 0045]) to the identified issuing computing system.
Safak does not disclose:
And a unique… number.
Gaddam teaches:
and a unique value generated by an issuer system to include two distinct portions separated by a marker where a first portion of the two distinct portions of the unique value includes a digitized surrogate value (token, see [0053]) of a transaction account number.
Safak discloses receiving a first data set, verifying the first digital signature, extracting the second data set, extracting the third data set, identifying an issuing system, and transmitting a fourth data set. Safak does not disclose a digitized surrogate value of a transaction account number, but Gaddam does. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to combine the method and system for consumer-initiated transactions using encrypted tokens of Safak with the digitized surrogate value of Gaddam because 1) a need exists for initiating payment transaction where payment credentials may be conveyed to a POS that are protected from exposure to the POS while also being resistant to fraud (see Safak [0004]); and 2) a need exists for a convenient and secure method of authenticating a paying user at time of checkout without surrendering or revealing personal information to the merchant or third party authenticators (see Gaddam [0005]). Using a digitized surrogate value will not reveal personal information to the parties in a transaction, and may help protect payment credentials.
Claims 2, 10
Furthermore, Gaddam teaches:
verifying, by the verification module of the processing server, that an acquirer value corresponds to the acquirer identification value (unique identifiers compared, see [0080]) prior to extracting the third data set,
wherein the second data set further includes the acquirer value (identifier, see [0080]), and the third data set is extracted (transaction data, see [0084]) in response to verification that the acquirer value corresponds to the acquirer identification value.
Claims 3, 11
Furthermore, Safak discloses:
the first data set is encrypted (encrypted, see [0033]) using a second public key (merchant public key, see [0037]) of a second cryptographic key pair, and the method further comprises:
decrypting, by an encryption module of the processing server, the first data set using a private key (merchant private key, see [0033]) of the second cryptographic key pair.
Claims 4, 12
Furthermore, Gaddam teaches:
encrypting, by an encryption module of the processing server, the fourth data set prior to transmission to the issuing computing system using a public key of the issuing computing system (encrypts with issuer’s public key, see [0062]).
Claims 5, 13
Furthermore, Safak discloses:
the acquirer identification value (bank id number, see [0031]), merchant identification value (merchant identifier, see [0053]), and issuer identification value (issuing institution identifier, see [0053]) each include at least an identifier and an associated public key (account public key, see [0053]).
Claims 6, 14
Furthermore, Safak discloses:
the acquirer identification value, merchant identification value, and issuer identification value are each digitally signed using a private key (account private key, see [0027]) of an identity cryptographic key pair that includes the respective associated public key.
Claims 7, 15
Furthermore, Safak discloses:
the transaction data includes tokenized payment account data (token includes data identifying the transaction account, see [0031]).
Claims 8, 16
Furthermore, Gaddam teaches:
the tokenized payment account data is digitally signed by the issuing computing system (signed with issuer’s private key, see [0062]).
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-16 of the instant application is provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-16 of US patent 12,393,945.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the subject matter of the instant application would have been obvious to one of ordinary skill in the art in light of the disclosure of US patent 12,393,945.
The instant application is directed to receiving a first data set comprising at least a second data set that is appended with an acquirer id value, wherein the first data set is signed with a first digital signature of an acquirer; verifying the first digital signature using a first public key; extracting the second data set comprising at least a third data set that is appended with a merchant id value; extracting the third data set including transaction data and a unique value generated by an issuer to include a digitized surrogate value of a transaction account number and an issuer id value; identifying an issuing computing system based on the issuer id value; and transmitting a fourth data set to the issuing computing system (see claim 1).
US patent 12,393,945 is directed to receiving a first data set comprising at least a second data set that is appended with an acquirer id value, wherein the first data set is signed with a first digital signature of an acquirer; verifying the first digital signature using a first public key; extracting the second data set comprising at least a third data set that is appended with a merchant id value; extracting the third data set including transaction data and a unique value generated by an issuer to include a digitized surrogate value of a transaction account number and an issuer id value; identifying an issuing computing system based on the issuer id value; and transmitting a fourth data set to the issuing computing system, wherein the fourth data set includes the first data set and a steward id value (see claim 1).
The instant application would have been obvious to one of ordinary skill in the art in light of US patent 12,393,945 because both encompass receiving a first data set comprising at least a second data set that is appended with an acquirer id value, wherein the first data set is signed with a first digital signature of an acquirer; verifying the first digital signature using a first public key; extracting the second data set comprising at least a third data set that is appended with a merchant id value; extracting the third data set including transaction data and a unique value generated by an issuer to include a digitized surrogate value of a transaction account number and an issuer id value; identifying an issuing computing system based on the issuer id value; and transmitting a fourth data set to the issuing computing system (see claim 1 of instant application and claim 1 of US patent 12,393,945).
Conclusion
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from Examiner should be directed to Chrystina Zelaskiewicz whose telephone number is 571-270-3940. Examiner can normally be reached on Monday-Friday, 9:30am-5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Neha Patel can be reached at 571-270-1492.
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/CHRYSTINA E ZELASKIEWICZ/Primary Examiner, Art Unit 3699