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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/7/2026 was filed before the mailing date of a first Office action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Status
Claims 1-20 are pending and original.
Claims 1, 11, and 17 are independent.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 1-20 are directed to methods or systems and thus fall within the statutory categories of invention. (Step 1: YES).
Step 2A - Prong 1
The Examiner has identified independent method claim 1 as the claim that represents the claimed invention for analysis and is similar to independent system claims 11 and 17. Claim 1 recites the limitations of:
1. A method comprising:
receiving, by a token server from an application provider computer, a request to obtain a token for a transaction, the request to obtain the token comprising sensitive information and a transaction identifier;
retrieving, by the token server, the token;
receiving, by the token server from a resource provider computer, a request for the token, the request for the token comprising the transaction identifier; and
providing, by the token server to the resource provider computer, the token.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as “Certain Methods of Organizing Human Activity”. The claim limitations delineated in bold above recite a fundamental economic practice, as they set forth or describe processing a request for a token, wherein in view of the specification [0032]: “A ‘token’ may include a substitute identifier for some information. For example, a payment token may include an identifier for a payment account that is a substitute for an account identifier, such as a primary account number (PAN). For instance, a token may include a series of alphanumeric characters that may be used as a substitute for an original account identifier. For example, a token “4900 0000 0000 0001” may be used in place of a PAN “4147 0900 0000 1234.” If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. The token server in claim 1 is just applying generic computer components to the recited abstract limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. Claims 11 and 17 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims recite an abstract idea)
Step 2A - Prong 2
This judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements of:
Claim 1: token server (receiving data from an application provider computer, and receiving/providing data to a resource provider computer)
Claim 11: additional elements of claim 1; processor; memory;
Claim 17: additional elements of claim 1; processor; memory;
The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. 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 and are at a high level of generality. Therefore, claims 1, 11, and 17 are 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)
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately 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, the additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. See Applicant’s specification para. [0058-0060], [0089] about implementation using general purpose or special purpose computing devices and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. Accordingly, these additional elements, do not change the outcome of the analysis, when considered separately and as an ordered combination. Thus, claims 1, 11, and 17 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent Claims
Dependent claims 2-10, 12-16, and 18-20 further define the abstract idea that is present in their respective independent claims 1, 11, and 17, and thus correspond to “Certain Methods of Organizing Human Activity” and hence are abstract for the reasons presented above. Dependent claim 18 includes the application provider computer. Dependent claim 20 includes a communication device operated by a user. These additional elements also amount to no more than mere instructions to apply the exception using a generic computer component.
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 are directed to an abstract idea without significantly more.
Thus, claims 1-20 are 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 (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 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.
Claims 1-7 and 10-20 are rejected under 35 U.S.C. 103 as being unpatentable over Nwokolo (US 2013/0297504 A1) in view of Patterson (US 2010/0030688 A1).
Regarding claims 1, 11, and 17, Nwokolo discloses a method and associated system comprising:
receiving, by a token server from an application provider computer, a request to obtain a token for a transaction, the request to obtain the token comprising sensitive information and a transaction identifier (see para. 0028-0030, wherein “sensitive information” is read in view of Applicant’s specification [0029]);
retrieving, by the token server, the token (see para. 0028-0030);
providing, by the token server to a resource provider computer, the token (see para. 0028-0030).
Nwokolo does not explicitly disclose, but Patterson teaches:
receiving, by the token server from a resource provider computer, a request for the token, the request for the token comprising the transaction identifier (see para. 0029).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method and system of Nwokolo to include the feature of Patterson to facilitate a transaction where a final amount of a payment for the transaction is unknown at the time that a merchant receives a corresponding authorization response from an issuer (see para. 0032).
Regarding claims 2 and 13, Nwokolo discloses: receiving, by the token server from a transaction processing computer, a request for the sensitive information, the request for the sensitive information comprising the token; and providing, by the token server to the transaction processing computer, the sensitive information (see para. 0037)
Regarding claim 3, Nwokolo discloses: wherein the transaction processing computer transmits the request for the sensitive information in response to receiving an authorization request message comprising the token (see para. 0033-0037).
Regarding claim 4, Nwokolo discloses: wherein the transaction processing computer replaces the token for the sensitive information in the authorization request message (see para. 0033-0037).
Regarding claim 5, Nwokolo discloses: wherein the transaction processing computer further transmits the authorization request message comprising the sensitive information to an authorizing entity computer for authorization (see para. 0033-0037).
Regarding claims 6 and 14, Nwokolo discloses: wherein the sensitive information comprises a primary account number (see para. 0033-0037).
Regarding claim 15, Nwokolo discloses: wherein the token is a payment token (see para. 0033-0037).
Regarding claims 7 and 19, Nwokolo discloses: wherein the sensitive information comprises a primary account number and the token is a payment token (see para. 0033-0037).
Regarding claims 10 and 16, Nwokolo discloses: wherein the transaction is a payment transaction (see para. 0028-0030).
Regarding claim 12, Nwokolo discloses wherein the resource provider computer is a merchant computer (see para. 0028-0030).
Regarding claim 18, Nwokolo discloses: wherein the system further comprises the application provider computer (see para. 0028-0030).
Regarding claim 20, Nwokolo discloses: a communication device operated by a user interacting with a resource provider operating the resource provider computer, the communication device in communication with the application provider computer (see para. 0028-0030).
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Nwokolo (US 2013/0297504 A1) in view of Patterson (US 2010/0030688 A1), further in view of Official Notice.
Regarding claim 8, Nwokolo discloses: wherein the application provider computer is programmed to receive transaction data from a communication device of a user conducting the transaction (see para. 0028-0030).
Nwokolo does not explicitly teach but Official Notice is taken that it was old and well known in the art before the effective filing date to receive encrypted data.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nwokolo to include this feature to enhance security.
Regarding claim 9, Nwokolo discloses: wherein the transaction data comprises a transaction type indicator and an identifier for the resource provider computer (see para. 0029, wherein “transaction type indicator” broadly encompasses the selected payment source).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Laracey (US 2011/0251892 A1) discloses systems, methods, processes, computer program code and means for using mobile devices to conduct payment transactions at merchant locations including brick and mortar locations and remote locations as well as for person to person transactions.
Nelsen (US 2015/0142673 A1) discloses methods and systems for providing a payment token issuance system using account issuer-defined payment token request rules generated and stored by a token issuer computer. The token issuer computer allows an account issuer to define payment token request rules, and the token issuer computer can automatically apply the payment token request rules to a payment token request without requiring additional decisioning by the account issuer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC T WONG whose telephone number is (571)270-3405. The examiner can normally be reached 9am-5pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael W Anderson can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC T WONG/Primary Examiner, Art Unit 3693
ERIC WONG
Primary Examiner
Art Unit 3693
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