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
Claims 1-18 filed May 20, 2025 are pending.
Claim Rejections - 35 USC § 112
3. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
4. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
5. As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
6. Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
7. Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
8. Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
9. In this particular case, claim 17 recites a means to process processor-executable instructions and a means to issue processor-issuable instructions, therefore claim 17 is interpreted under 35 U.S.C. 112(f).
Double Patenting
10. 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 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); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
11. 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
12. The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
14. Claims 1-18 are rejected on the ground of provisional nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent 11,367,077 and claims 1-9 and 10-27 of U.S. Patent 11,715,109. In fact, the ‘109 and ‘077 patents are more detailed and more specific and encompasses almost all of the elements of the broader, current ‘281 application as seen below.
15. This is an obviousness nonstatutory double patenting rejection because although the conflicting claims are not identical, they are not patentably distinct from each other because the claimed limitations from the present application and U.S. Patent 11,367,077 and U.S. Patent 11,715,109 above are significantly similar and the claimed features seem to be identical with various obvious alternate methods. The omission of an element with a corresponding loss of function is an obvious expedient. See In re Karlson, 136 USPQ 184 and Ex parte Rainu, 168 USPQ 375. For these reasons, claims 1-20 of the instant application are not identical to claims 1-22 of U.S. Patent 11,367,077 and claims 1-9 and 10-27 of U.S. Patent 11,715,109, but they are not patentably distinct.
Claim Rejections - 35 USC § 103
16. 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.
17. 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.
18. 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.
19. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
20. Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Graylin et al (2016/0247141) in view of Hammad (2012/0226582) and Yeager (2013/0054474).
21. Re Claims 1, 16-18: Graylin discloses comprising:
a memory (see Fig. 7 ref. 600, [0079]);
a component collection in the memory (see Fig. 7 ref. 600, [0079]);
a processor disposed in communication with the memory, and configured to issue a plurality of processing instructions from the component collection stored in the memory to (see Fig. 7 ref. 600, [0079]):
obtain, via at least one processor, a payment request from a third-party server for a payment transaction associated with a user (see Fig. 9, ref. 910, [0096], Fig. 11 ref. 1110, [0104]);
determine, via at least one processor, an antifraud resilient account identifier of an antifraud resilient enrolled payment card selected by the user for the payment transaction (see Fig. 9 refs. 922, 924, and [0097-0098] discloses the checkout server 600 forwarding the transaction to payment processor 926, which may include generating and forwarding transaction/payment data including dynamic cryptogram to payment processor 926… cryptogram may be generated using payment token, primary account number (PAN), expiration or expiry date (EXP), timestamp, and/or counter, at time of transaction…);
generate, via at least one processor, a payment cryptogram request, wherein the payment cryptogram request includes transaction data sufficient to generate a transaction payment request cryptogram and transaction description data sufficient to allow the user to identify the payment transaction (see Fig. 9 refs. 922, 924, and [0097-0098] discloses the checkout server 600 forwarding the transaction to payment processor 926, which may include generating and forwarding transaction/payment data including dynamic cryptogram to payment processor 926… cryptogram may be generated using payment token, primary account number (PAN), expiration or expiry date (EXP), timestamp, and/or counter, at time of transaction… cryptogram may be generated locally at mobile device fig. 11 ref. 1122, [0105] which discloses one authenticated, customer 900 confirms transaction with checkout server 600, and checkout application 502 calls 1122 the checkout server 600 or web site API 602 to complete the transaction identified by checkout token);
query, via at least one processor, an antifraud resilient enrolled client of the user for a transaction payment request cryptogram authorized by the user and signed with a cryptographic key associated with the antifraud resilient account identifier (see Figs. 9 refs. 922-930, [0097], Fig. 11 ref. 1116, [0105]);
query, via at least one processor, a payment transaction processing server for a payment transaction authorization using the transaction payment request cryptogram(see Figs. 9 refs. 922-930, [0097], Fig. 11 ref. 1116, [0105]);
and provide, via at least one processor, a transaction confirmation to the third-party server upon obtaining the payment transaction authorization (see Fig. 9, ref. 938, [0099], Fig. 11 ref. 1138, [0106]).
wherein the antifraud resilient enrolled payment cards were issued by an issuing bank (see [0064] issuer of a card can be a bank).
However, Graylin fails to explicitly disclose a list of cards. Meanwhile, Hammad teaches:
instruct, via at least one processor, a client of the user to display a list of antifraud resilient enrolled payment cards associated with the user, wherein each of the antifraud resilient enrolled payment cards in the list is identified by a secondary identifier that is sufficient to allow the user to identify the respective antifraud resilient enrolled payment card without exposing the respective antifraud resilient enrolled payment card’s antifraud resilient account identifier (see [0018] a dialog box to select one of cards to use for payment);
wherein the payment transaction authorization is based on validation of the transaction payment request cryptogram by an issuer server associated with an issuer of the antifraud resilient enrolled payment card (see [0019] validation determines if cryptogram is valid and if valid associates the return information to user’s account).
From the teaching of Hammad, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Graylin’s mobile checkout system with Hammad’s disclosure of listing cards and validating a cryptogram in order “… for effecting secure communication of payment information to merchants… (see Hammad Abstract).”
However, Graylin and Hammad fails to explicitly disclose a cryptographic key and a cryptogram request. Meanwhile, Yeager teaches:
a cryptographic key (see [0041, 0149] cryptographic keys);
a cryptogram request (see [0163, 0197, 0215] cryptogram request).
From the teaching of Yeager, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Graylin’s mobile checkout system and Hammad’s disclosure of validation of cryptogram and listing of cards further with Yeager’s disclosure of cryptographic keys and cryptogram request in order “… for performing a timely authorization of digital credential data… (see Yeager Abstract).”
22. Re Claim 2: Graylin discloses wherein the third-party server is a merchant server (see Fig. 9 ref. 904, merchant server).
23. Re Claim 3: Graylin discloses wherein the antifraud resilient account identifier is a primary account number printed on a physical version of the antifraud resilient enrolled payment card (see [0057] discloses PAN with cards).
24. Re Claim 4: Graylin discloses wherein the antifraud resilient account identifier is a second primary account number that is different from a first primary account number printed on a physical version of the antifraud resilient enrolled payment card (see [0098] token may be used instead of PAN for payment).
25. Re Claim 5: However, Graylin fails to disclose the following. Meanwhile, Hammad discloses further, comprising: the processor issues instructions from the component collection, stored in the memory, to:
obtain, via at least one processor, the user’s payment card selection from the list, wherein the user’s payment card selection is the antifraud resilient enrolled payment card selected by the user for the payment transaction (see [0018] a dialog box to select one of cards to use for payment);
From the teaching of Hammad, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Graylin’s mobile checkout system with Hammad’s disclosure of listing cards and validating a cryptogram in order “… for effecting secure communication of payment information to merchants… (see Hammad Abstract).”
26. Re Claim 6: Graylin discloses wherein the client is one of: the antifraud resilient enrolled client of the user, a non-enrolled client of the user (see [0093] discloses enrolled/non-enrolled).
27. Re Claim 7: Graylin discloses wherein the antifraud resilient enrolled payment card selected by the user for the payment transaction is a default payment card selected by the user for payment transactions prior to initiating the payment transaction (see [0061, 0062] default payment and selection between payment cards stored in secure element).
28. Re Claim 8: However, Graylin and Hammad fail to disclose the following. Meanwhile, Yeager discloses wherein the transaction payment request cryptogram conforms to ISO8583 authorization request cryptogram message format (see [0217] discloses ISO8583 format). From the teaching of Yeager, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Graylin’s mobile checkout system and Hammad’s disclosure of validation of cryptogram and listing of cards further with Yeager’s disclosure of the cryptogram message format in order “… for performing a timely authorization of digital credential data… (see Yeager Abstract).”
29. Re Claim 9: Graylin discloses further comprising:
the processor issues instructions from the component collection, stored in the memory, to: instruct, via at least one processor, the antifraud resilient enrolled client of the user to provide a push notification to the user requesting transaction authorization of the payment transaction, wherein the push notification identifies the antifraud resilient enrolled payment card selected by the user for the payment transaction, wherein the push notification is generated using the transaction description data (see Fig. 11 ref. 1116, [0106] push notification to user request transaction authorization of payment transaction).
30. Re Claim 10: Graylin discloses wherein the user is required to authenticate to the antifraud resilient enrolled client of the user to be able to provide the transaction authorization (see Fig. 9 ref. 920, [0097], Fig. 11 ref. 1120, [0105]).
31. Re Claim 11: However, Graylin and Hammad fail to disclose the following. Meanwhile, Yeager discloses wherein the cryptographic key is stored in a secure storage location of the antifraud resilient enrolled client (see [0188] secure storage of cryptographic key). From the teaching of Yeager, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Graylin’s mobile checkout system and Hammad’s disclosure of validation of cryptogram and listing of cards further with Yeager’s disclosure of the secure storage in order “… for performing a timely authorization of digital credential data… (see Yeager Abstract).”
32. Re Claim 12: Graylin discloses wherein the payment transaction processing server is configured to emulate a physical point of sale device using a network connected appliance (see Fig. 9, [0096-0100], Fig. 11, [0104-0108]).
33. Re Claim 13: Graylin discloses wherein the payment transaction processing server is one of: a payment gateway, the issuer server (see Fig. 9 ref. 926, payment processor).
34. Re Claim 14: Graylin discloses wherein the transaction confirmation to the third-party server includes a default shipping address selected by the user for payment transactions prior to initiating the payment transaction (see [0093] checkout server storing shipping address for user).
35. Re Claim 15: Graylin discloses further, comprising:
the processor issues instructions from the component collection, stored in the memory, to: instruct, via at least one processor, the antifraud resilient enrolled client of the user to provide a push notification to the user with a transaction confirmation (see Fig. 11 ref. 1130, [0105] discloses checkout server returning transaction results to checkout application).
Examiner Notes
36. In order to advance prosecution, the Examiner suggests clarifying what an antifraud resilient account identifier can be, or comprises of. The Examiner also suggests clarifying what a component collection in the memory is. The Examiner suggests incorporating the elements of claims 5, 7, and 10-12 (dependent on claim 9) together into all of the independent claims. Finally, the Examiner suggests incorporating more hardware from the Specification and any unique arrangements of hardware, unique hardware, or unique ways the hardware is communicating. The aforementioned claim suggestions, in combination together, is suggested to help advance prosecution forward, although further search, examination, and consideration is required.
Response to Arguments
37. Applicant's arguments filed 5/20/25 have been fully considered and are not found to be convincing. The applicant argues that the following is not disclosed: “… determine, via at least one processor, an antifraud resilient account identifier of an antifraud resilient enrolled payment card selected by the user for the payment transaction… wherein the payment transaction authorization is based on validation of the transaction payment request cryptogram by an issuer server associated with an issuer of the antifraud resilient enrolled payment card.” The Examiner respectfully disagrees. In multiple places such as [0097-0098], Graylin discloses the checkout server 600 forwarding the transaction to payment processor 926, which may include generating and forwarding transaction/payment data including dynamic cryptogram to payment processor 926, where the cryptogram may be generated using payment token, primary account number (PAN), expiration or expiry date (EXP), timestamp, and/or counter, at time of transaction. Then, Hammad teaches in [0019] that a validation determines if cryptogram is valid and if valid associates the return information to user’s account.
Conclusion
38. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Abughazalah et al (Secure Mobile Payment on NFC-Enabled Mobile Phones Formally Analysed Using CasperFDR, NPL) is found to be the most pertinent NPL prior art.
39. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
40. 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.
41. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FAWAAD HAIDER whose telephone number is (571)272-7178. The examiner can normally be reached Mon-Fri 8 AM to 5 PM.
42. 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.
43. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Florian Zeender can be reached on 571-272-6790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FAWAAD HAIDER/Examiner, Art Unit 3627
/FLORIAN M ZEENDER/Supervisory Patent Examiner, Art Unit 3627
Prosecution Insights