DETAILED ACTION
This Non-Final Office action is in response to Applicant’s response on 09/01/2026. Claims 11, 17, 20-29 are pending; claims 20-29 are withdrawn; and claims 11, 17 are rejected below. The effective filing date of the claimed invention is 3/3/2014.
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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 11, 17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
See the current amendments to claim 11, 17. Each of the amendments of claim set filed 09/01/2026 include receive . . . “only said last four digits”, compare “only said last four digits.” The examiner finds that Applicant does not have support for such negative limitations that exclude all of data from being received, compared, and determined. To note, MPEP 2173.05(i) indicates that negative limitations are permitted if they clearly define claim boundaries and have written-description support in the original specification. Courts have held that negative limitations are not inherently indefinite, but they must be explicitly supported and not merely rely on the absence of disclosure.
Here, Applicant’s Specification does not provide such explicit support. See Applicant’s Specification at (as filed) [0035] “In one embodiment, the match determiner 115 determines if a predetermined amount of information of the set of customer information 135 that is input by the customer 185 is the same as the stored customer information 170.” Here, the predetermined amount of information can only be the last 4 digits, but this sentence provides contradicting support for Applicant’s claim that requires receiving “only” the last four digits. Here, Applicant has explicit support for the opposite, for where there is a set of information input from the customer, and the predetermined amount of information (a subset) can be the last four digits. Therefore, this is new matter for where the system only receives the last four digits. Appropriate correction is required.
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 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 11, 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. Pub. No. 2015/0213443 to Geffon et al. (“Geffon”) in view of U.S. Pat. Pub. No. 2007/0045402 to Rothschild (“Rothschild”) in further view of U.S. Pat. Pub No. 2008/0097954 to Dutta et al. (“Dutta”).
With regard to claims 11, 15, and 17, Geffon discloses the claimed system that links a credit account to a customer identifier (see e.g. [0010], “Some embodiments of the present technology involve using a tokenized pre-authorization to enable card-not-present transactions for in-store purchases without requiring the store to keep storing credit card information on file.” (emphasis added); [0028]), the system comprising:
a point of sale (POS) station comprising: a memory; one or more processors, a customer transaction checkout interface; a customer facing device (see Figs. 7A, 7B, RAM at 715, Processor 755, user interface components at 785, output device 765; [0073]) to receive: a customer identifying information, the customer identifying information being particular to a customer (see [0042] where the POS system is equipped with POS barcode readers that are fully capable of receiving customer specific ID data, such as a token; [0074]) the customer identifying information provided without requiring any additional credit card account identification information1 (the examiner notes that the token, or claimed customer identifying information, is provided in place of a credit card identifying information. No additional credit card account info is needed. The token includes encoded information in place of actual credit card identifying information. See Geffon at [0009]. [0015] “Some embodiments involve the token being encoded as a two-dimensional scannable barcode and the barcode being sent to the user and displayed as a digital card in a digital wallet application.” [0034]; [0045] “ The cardholder or delegate can present the token 225 to a merchant in lieu of other forms of payment.” (emphasis added); as for the limitation of “without requiring any additional credit card account identification information,” the examiner still refers to the token as being the customer identifying information, and there is nothing in Geffon that requires any additional credit card account identification information. In fact, only the token is required, [0045] “The cardholder or delegate can present the token 225 to a merchant in lieu of other forms of payment.” To be clear, referring to e.g. [0045] there is other data points that can be transferred between the parties, but nothing more is required, and referring to Geffon at [0045] everything mentioned “can be” or “may be” or “optionally be” transferred but this only indicates capability not that any else is required, as claimed; For the claimed aspect of where the customer identifying information is “at least a last four digits of SSN” the examiner has clearly referred to ); and
a communication device to communicate with a remote credit account linker computing device (see Fig. 7B, Communication interface at 790);
the remote credit account linker computing device comprising: a memory; and one or more processors (see e.g. Fig. 3, tokenization service broker) to: receive, from said POS station, said customer identifying information without requiring said credit card account identifying information be capable of performing the claimed functional steps, such as “receive, from said POS station, said customer identifying information without requiring said any additional credit card account identification information.” In other words, this particular limitations requires that the prior art system is capable of receiving, from the POS, customer identifying information “without requiring said any additional credit card account identification information.” There is nothing in Geffon that requires any additional credit card account id info.);
access a database of stored customer information for a plurality of customers, said database comprising: an amount of stored customer identifying information for each of the plurality of customers; and ADS-063B-2-Application No.: 14/637,327Examiner: Ludwig, P.Art Unit: 3687a link to a stored pre-existing credit account information for one or more of the plurality of customers; compare said customer identifying information received from said POS station with the stored customer identifying information of said database; determine a match between said customer identifying information received from said POS station and an identified customer of said plurality of customers; utilize the match to link said customer identifying information received from said POS station with said stored pre-existing credit account information of the identified customer (see [0065] [0066], published claim 1, etc.);
provide, to said POS station,
complete said purchase at said POS station upon receipt of
However, Geffon does not disclose providing the “stored pre-existing credit account information to said POS station,” and completing the purchase based on the receiving of the stored credit information.
Rothschild teaches at e.g. [0039] that it would have been obvious to one of ordinary skill in the credit card transaction art to include the ability to present an identifier to a POS, the POS sends the identifier to a remote server, and then the remote server matches the identifier with a credit card number and sends the credit card number to the POS terminal so that the found credit card number can be used to process the transaction, where this is performed in order to allow the user to use any associated credit cards that are associated with the initial identifier provided to the POS. See Rothschild where the national credit card information is provided to the POS terminal, then the POS terminal provides this national credit card information to a “remote server database 115”, and then further the remote server determines any associated credit cards with the national credit card, and when found “If the national credit card is cross associated with a store credit card, the remote server 114 will communicate back to the point-of-sale terminal 102 the store credit card number (i.e. store brand) and credit card name.”
Therefore, it would have been obvious to one of ordinary skill in the credit card art at the time of filing to modify Geffon to include the ability to present an identifier to a POS, the POS sends the identifier to a remote server, and then the remote server matches the identifier with a credit card number and sends the credit card number to the POS terminal so that the found credit card number can be used to process the transaction, where this is performed in order to allow the user to use any associated credit cards that are associated with the initial identifier provided to the POS. See Rothschild where the national credit card information is provided to the POS terminal, then the POS terminal provides this national credit card information to a “remote server database 115”, and then further the remote server determines any associated credit cards with the national credit card, and when found “If the national credit card is cross associated with a store credit card, the remote server 114 will communicate back to the point-of-sale terminal 102 the store credit card number and credit card name.”
Further, Geffon is silent regarding receive only said last 4 digits, compare only said last 4 digits, and determine a match between only said last 4 digits and stored data. First, see 112(a) rejection above. Further, for prior art purposes, see Dutta at e.g. [0034] [0043-44] [0046-47]. These passages describe a single field look up relating to the last four digits of the user’s social security card. [0044] expressly identifies matching a particular last four SSN value. [0044] uses the LIKE operator to match the supplied last-4-SSN value against other similar/same last-4-SSN value(s). [0046] searches the index values equal to the last-4-SSN value linked to corresponding database rows. [0047] retrieves the matching row. Therefore, it would have been obvious to one of ordinary skill in the querying art before the effective filing date of the claimed invention to match such last-4-SSN in a single query, as shown in Dutta, as this allows the user to query for a specific ranged lookup operation such as including the last-4-SSN, as described in Dutta, as this is just one more piece of data that the user can use in this situation, as combined with Geffon/Rothschild. See further Dutta [0002-3] describing a common problem addressed by the system of Dutta, including the single search field described in related to the claimed invention:
[0002] One common method used to protect valuable information in a database and to comply with privacy regulations or policies is encryption. However, use of encrypted data in a database raises other issues, such as, for example, how to permit authorized access to the data by existing applications and how to find particular items of the data without decrypting all of the data and performing a linear search.
[0003] While solutions exist for performing equality based lookups on encrypted data in a database, a solution for performing ranged lookups is desired, but is not trivial.
With regard to claim 16, Geffon further discloses where said customer identifying information comprises a password for said customer (see e.g. [0031]).
Response to Arguments
Applicant's arguments filed 09/01/2026 have been fully considered but they are not persuasive.
For the current amendments, the examiner has brought in a new reference to Duttato show the single search field inquiry to the database, matching and determining steps. The examiner also wants to turn Applicant’s attention to the 112(a) rejection relating to the newly added amendment.
Applicant argues that the AMENDED claim includes the removal of transitional phrase of “comprising.” However, comprising is clearly still being recited in exemplary claim 11.
Conclusion
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/PETER LUDWIG/Primary Examiner, Art Unit 3627
1 For this limitation Applicant refers the examiner to [0024-27] of Applicant’s Specification. In this portion of the Specification, the customer has left his physical credit card at home, so the customer provides personal information such as the last four digits of the user’s SSN, driver’s license, etc. Then the merchant/remote server proceeds to look up the customer’s credit card so that the customer can use the card in a card-not-present transaction. The claimed language has been interpreted in light of this teaching by Applicant’s Specification.
