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 the Claims
This office action is in response to the amendments filed by Applicant on May 11, 2026.
Claims 1, 12, 13, and 16–17 have been amended and are hereby entered.
Claim 20 has been added.
No claims have been cancelled.
Claims 1–20 are pending and have been examined.
This action is made FINAL.
Claim Objection
The following claims are objected to for minor informalities. Appropriate correction is required.
Claim 16: “storing instruction which” should read “storing instructions which” (plural).
Nonstatutory 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 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).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321© 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).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1–20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8–27 of U.S. Patent No. [Parent Patent Number] (hereinafter “the '128 Patent”).
Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons set forth below.
Claim 1 of the Instant Application vs. Claim 14 of the '128 Patent
Instant Application — Claim 1
'128 Patent — Claim 14
An accessory device associated with a companion device, the accessory device comprising:
A data processing system on a wearable electronic device, the system comprising:
a wireless network interface;
a wireless network interface;
a touch-sensitive input;
a touch-sensitive display;
a memory device to store instructions; and
a memory device to store instructions; and
one or more processors to execute the instructions, wherein the instructions cause the one or more processors to enable, via the touch-sensitive input, the accessory device to:
one or more processors to execute the instructions, wherein the instructions cause the one or more processors to present, via the touch-sensitive display, a user interface to enable the wearable device to:
receive, via the touch-sensitive input, a request to initiate a digital purchase;
[inherent in “transact a digital purchase” — a purchase must be initiated/requested before being transacted]
establish a communication connection with a server of a cloud service provider via the wireless network interface; and
establish a communication connection with a server of a cloud service provider via the wireless network interface; and
transact the digital purchase from the server without assistance from the associated companion device.
transact a digital purchase from the server without assistance from a companion device, wherein the digital purchase is transacted at least in part using a signature generated with the one or more keys.
Analysis: Claim 1 of the instant application and claim 14 of the '128 Patent are directed to the same inventive concept — a wearable electronic device with a wireless network interface, touch-sensitive input/display, memory, and processors that independently transacts a digital purchase from a cloud service provider without assistance from a companion device. Claim 14 of the '128 Patent additionally recites passcode-based key unlocking and signature-based transaction authentication. Claim 1 of the instant application recites “receive, via the touch-sensitive input, a request to initiate a digital purchase,” and uses broader terminology (“accessory device associated with a companion device” vs. “wearable electronic device”).
Claim 1 of the instant application is broader than claim 14 of the '128 Patent. Claim 14 of the '128 Patent anticipates claim 1 of the instant application because every element of claim 1 is encompassed by claim 14 (a wearable device with a touch-sensitive display that transacts a digital purchase from a cloud server without companion assistance necessarily receives a request to initiate the purchase via the touch-sensitive display). Therefore, claim 1 of the instant application is not patentably distinct from claim 14 of the '128 Patent.
Claim 2 of the Instant Application vs. Claim 14 of the '128 Patent
Claim 2 recites “send a request for a user input to unlock the accessory device; receive a first user input via the touch-sensitive input; and use the first user input to unlock one or more keys that are securely stored on the accessory device.”
Claim 14 of the '128 Patent recites “present a request for a passcode used to unlock the wearable electronic device; receive the passcode via the user interface; use the passcode to unlock one or more keys that are securely stored on the wearable electronic device.”
These limitations are substantially identical. Claim 2 is not patentably distinct from claim 14 of the '128 Patent.
Claim 3 of the Instant Application vs. Claims 14, 19–20 of the '128 Patent
Claim 3 recites “the accessory device is a wearable device.” Claims 19–20 of the '128 Patent recite that the wearable electronic device includes a smartwatch device, head mounted display, jewelry, shoes, clothes, or other wearable item. Claim 3 is not patentably distinct from claims 14 and 19–20 of the '128 Patent.
Claim 10 of the Instant Application vs. Claim 17 of the '128 Patent
Claim 10 recites “the touch-sensitive input comprises a fingerprint input or a touch sensitive button, wherein an input on the fingerprint input or an input on the touch sensitive button, validates an intent of a user to purchase a product.”
Claim 17 of the '128 Patent recites “the one or more processors to present an interface via the touch-sensitive display, the interface to present a request for a physical input as validation of a request to transact the digital purchase.”
Both claims require a physical/touch input that validates purchase intent. Claim 10 is not patentably distinct from claim 17 of the '128 Patent.
Claim 11 of the Instant Application vs. Claims 14, 18 of the '128 Patent
Claim 11 recites “one or more keys are stored in a secure memory of a secure processor of the accessory device, and wherein the transaction is performed based at least in part on a signature generated with the one or more keys.”
Claim 14 of the '128 Patent recites “the digital purchase is transacted at least in part using a signature generated with the one or more keys.” Claim 18 recites “the one or more keys are stored in a secure memory of a secure processor of the wearable electronic device.”
These limitations are identical in substance. Claim 11 is not patentably distinct from claims 14 and 18 of the '128 Patent.
Claim 12 of the Instant Application vs. Claim 21 of the '128 Patent
Instant Application — Claim 12
'128 Patent — Claim 21
A method executed by one or more processors of an accessory device associated with a companion device, the method comprising:
A method executed by one or more processors of a wearable electronic device, the method comprising:
receiving, via a touch-sensitive input of the accessory device, a request to initiate a digital purchase;
[inherent in transacting a digital purchase]
establishing a communication connection with a server of a cloud service provider via a wireless network interface of the accessory device; and
establishing a communication connection with a server of a cloud service provider via a wireless network interface of the wearable electronic device; and
transacting the digital purchase from the server without assistance from the associated companion device.
transacting a digital purchase from the server without assistance from a companion device, wherein the digital purchase is transacted at least in part using a signature generated with the one or more keys.
Analysis: Claim 12 of the instant application is a broader method claim that omits the passcode/key/signature limitations of claim 21 of the '128 Patent. Claim 21 of the '128 Patent encompasses all elements of claim 12 (plus additional limitations). Therefore, claim 21 of the '128 Patent anticipates claim 12 of the instant application, and claim 12 is not patentably distinct from claim 21 of the '128 Patent.
Claim 16 of the Instant Application vs. Claim 8 of the '128 Patent
Instant Application — Claim 16
'128 Patent — Claim 8
A non-transitory machine-readable medium storing instruction which, when executed by one or more processors of an accessory device associated with a companion device, cause the one or more processors to perform operations comprising:
A non-transitory machine-readable medium storing instruction which, when executed by one or more processors of a wearable electronic device, cause the one or more processors to perform operations comprising:
receiving, via a touch-sensitive input of the accessory device, a request to initiate a digital purchase;
[inherent — presenting a request for passcode, receiving passcode, then transacting necessarily involves receiving a purchase initiation]
establishing a communication connection with a server of a cloud service provider via a wireless network interface of the accessory device; and
establishing a communication connection with a server of a cloud service provider via a wireless network interface of the wearable electronic device; and
transacting the digital purchase from the server without assistance from the associated companion device.
transacting a digital purchase from the server without assistance from a companion device, wherein the digital purchase is transacted at least in part using a signature generated with the one or more keys.
Analysis: Claim 16 of the instant application is broader than claim 8 of the '128 Patent, omitting the passcode/key/signature limitations. Claim 8 of the '128 Patent encompasses all elements of claim 16 plus additional security limitations. Claim 16 is not patentably distinct from claim 8 of the '128 Patent.
Claim 20 of the Instant Application vs. Claim 14 of the '128 Patent and the Specification
Claim 20 recites “the accessory device is a thin accessory device, and wherein the accessory device is provisioned to make the digital purchase based on a password for the accessory device being entered on the companion device.”
Claim 14 of the '128 Patent recites a wearable electronic device that presents a request for a passcode and uses the passcode to unlock keys for transacting a digital purchase. While claim 14 does not explicitly recite the provisioning via the companion device, the specification (which is identical for both applications) at ¶[0090] discloses “a password for the wearable device 100 is entered on the companion device, and at operation 520 a provisioning process is implemented to provision the wearable device 100 to make purchases.” It would have been obvious to one of ordinary skill in the art to include provisioning via the companion device as recited in claim 20 of the instant application in view of the disclosure common to both applications and the '128 Patent claims. Claim 20 is not patentably distinct from claim 14 of the '128 Patent.
Summary of Double Patenting Correspondence
Instant App Claim
'128 Patent Claim(s)
Basis
1
14
Anticipated by (broader)
2
14
Anticipated by
3
14, 19–20
Anticipated by
4
14
Obvious over (pairing prior to connection obvious variant)
5
14
Obvious over (aural indication is common design choice)
6
14
Obvious over (specific sound types are design choices)
7
14, 16
Anticipated by (sensor to detect physical input)
8
14, 16
Anticipated by (intensity sensor obvious variant of sensor)
9
14
Obvious over (microphone is conventional component)
10
14, 17
Anticipated by (physical input validates purchase intent)
11
14, 18
Anticipated by (keys in secure processor, signature)
12
21
Anticipated by (broader method)
13
21, 14
Anticipated by (passcode unlocks keys)
14
21, 25–26
Anticipated by (wearable device)
15
21
Obvious over (pairing prior to connection)
16
8
Anticipated by (broader CRM)
17
8, 14
Anticipated by (passcode unlocks keys)
18
8, 12–13
Anticipated by (wearable device)
19
8
Obvious over (pairing prior to connection)
20
14
Obvious over (provisioning via companion)
Conclusion
Claims 1–20 of the instant application are rejected under the judicially created doctrine of nonstatutory obviousness-type double patenting as being unpatentable over claims 8–27 of U.S. Patent No. [Insert Parent Patent Number] (the '128 Patent). Although the claims are not identical, the instant claims are broader versions of, or obvious variants of, the patented claims. The patented claims recite all structural and functional elements of the instant claims plus additional limitations (passcode-based key unlocking, signature-based authentication). The instant claims merely omit certain limitations present in the patented claims, which does not render them patentably distinct. See In re Karlson, 136 USPQ 184 (CCPA 1963) (omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before).
This rejection may be overcome by filing a terminal disclaimer in accordance with 37 CFR 1.321© or 1.321(d).
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 a judicial exception (i.e., an abstract idea) without significantly more.
Claim 1
Claim 1 is rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1 – Statutory Category: Claim 1 recites an “accessory device” comprising hardware components (a wireless network interface, a touch-sensitive input, a memory device, and one or more processors). The claim is directed to a machine/manufacture, which is a statutory category under § 101. Step 1 is satisfied.
Step 2A, Prong 1 – Judicial Exception: Claim 1 recites the following limitations that, under their broadest reasonable interpretation, cover a method of organizing human activity:
“receive, via the touch-sensitive input, a request to initiate a digital purchase”
“establish a communication connection with a server of a cloud service provider via the wireless network interface”
“transact the digital purchase from the server without assistance from the associated companion device”
These limitations describe a commercial interaction — specifically, initiating and completing a purchase transaction from a remote server. Transacting a purchase is a fundamental economic practice and commercial interaction that falls squarely within the “Methods of Organizing Human Activity” grouping of abstract ideas. The limitation “without assistance from the associated companion device” describes a negative functional constraint on who/what participates in the transaction but does not alter the fundamental nature of the activity (a commercial purchase). Accordingly, the claim recites a judicial exception (abstract idea).
Step 2A, Prong 2 – Integration into a Practical Application: The claim recites the following additional elements beyond the abstract idea:
a wireless network interface
a touch-sensitive input
a memory device to store instructions
one or more processors to execute the instructions
an accessory device associated with a companion device
The claim is evaluated as a whole to determine whether these additional elements integrate the judicial exception into a practical application.
The additional elements amount to no more than generic computer hardware recited at a high level of generality. A wireless network interface is a standard communication component present in virtually all modern electronic devices. A touch-sensitive input is a conventional user interface component in wearable and mobile devices. A memory device and one or more processors are fundamental, generic computing components. These elements are described in the specification as standard components of wearable devices (see Spec. ¶¶ [0029]–[0052], [0122]–[0142]).
The recitation of an accessory device associated with a companion device merely describes a type or category of device and constitutes a field-of-use limitation. The phrase “without assistance from the associated companion device” is a negative limitation describing a desired result (independence from the companion device) rather than a specific technological mechanism that achieves that result.
Applicant’s specification describes specific technological mechanisms that could constitute an improvement to technology — including a secure enclave processor storing public-private key pairs, a provisioning protocol involving password equivalent tokens (PETs), and a biometric challenge-response protocol with cryptographic signing (Spec. ¶¶ [0024]–[0025], [0098]–[0101], [0142]). However, the claim does not recite any of these specific technological mechanisms. The claim does not require a secure processor, cryptographic operations, key signing, biometric challenges, provisioning protocols, or any specific authentication architecture. The claim merely recites generic hardware performing a commercial transaction.
The Examiner acknowledges Applicant’s citation to the August 4, 2025 memorandum regarding “close calls” and the instruction that the specification need not explicitly set forth the improvement. However, the claim must still reflect the disclosed improvement. See MPEP § 2106.05(a). Here, the claim does not reflect the security model and provisioning architecture that constitutes the disclosed improvement — it recites only the high-level functional result (transacting a purchase independently).
Accordingly, the additional elements do not integrate the abstract idea into a practical application. The claim does not recite: (1) an improvement to the functioning of a computer or to another technology; (2) application of the judicial exception with or by a particular machine (beyond generic hardware); (3) a transformation of a particular article to a different state or thing; or (4) other meaningful limitations beyond generally linking the abstract idea to a particular technological environment (wearable devices). The claim is directed to an abstract idea.
Step 2B – Significantly More: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements, considered individually and in combination, are well-understood, routine, and conventional (WURC):
A wireless network interface: The specification describes wireless network interfaces (Wi-Fi, Bluetooth, NFC, cellular) as standard components of wearable devices (Spec. ¶¶ [0050], [0053], [0139]–[0140]). Prior art of record (Purves ¶¶ [0056]–[0058]) confirms this is conventional.
A touch-sensitive input: The specification describes touch-sensitive inputs (capacitive sensors, force sensors) as standard components (Spec. ¶¶ [0035]–[0036], [0048]). Prior art of record (Purves ¶¶ [0060], [0064]–[0065]) confirms this is conventional.
A memory device to store instructions and one or more processors to execute the instructions: Generic memory and processor hardware are foundational computer components. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 225 (2014) (generic computer implementation does not supply an inventive concept). The specification describes these as standard features (Spec. ¶¶ [0050]–[0052], [0134]–[0137]).
An accessory device associated with a companion device: Wearable devices paired with companion smartphones were well-understood, routine, and conventional as of the June 1, 2019 priority date (e.g., Apple Watch paired with iPhone; see also Purves ¶¶ [0056]–[0058]; Li, U.S. 2019/0279637; Castinado, U.S. 9,554,274).
The combination of these elements does not transform the claim into patent-eligible subject matter. The ordered combination merely recites the conventional architecture of a wearable device tasked with performing a commercial purchase transaction. This is no more than “apply it” on generic hardware. See Alice, 573 U.S. at 226. Mere instructions to apply the exception using generic computer components cannot provide an inventive concept.
Conclusion: Claim 1 is not patent eligible under 35 U.S.C. § 101.
Claims 2–11 (Dependent from Claim 1)
Claim 2 additionally recites “send a request for a user input to unlock the accessory device; receive a first user input via the touch-sensitive input; and use the first user input to unlock one or more keys that are securely stored on the accessory device.” The additional elements include sending a request for user input, receiving user input via the touch-sensitive input, and unlocking keys securely stored on the accessory device. These describe a conventional user authentication step (passcode/PIN entry to unlock device functionality). User authentication via passcode is well-understood, routine, and conventional. See Alice, 573 U.S. at 225; see also Purves ¶¶ [0126]–[0128]; Castinado, U.S. 9,554,274. Claim 2 does not recite the specific secure processor architecture, the type of keys, or the cryptographic mechanism used. The claim does not amount to significantly more.
Claim 3 additionally recites “the accessory device is a wearable device.” This is a field-of-use limitation that narrows the type of device but does not add technological substance or integrate the abstract idea into a practical application. Claim 3 does not amount to significantly more.
Claim 4 additionally recites “the accessory device is paired with the associated companion device prior to establishing the communication connection with the server of the cloud service provider.” The additional element is pairing the accessory device with the companion device prior to the server connection. Device pairing (e.g., Bluetooth pairing) is well-understood, routine, and conventional. See Spec. ¶¶ [0074]–[0075]; Purves ¶¶ [0056]–[0058]. This limitation describes a temporal ordering of conventional steps and does not amount to significantly more.
Claim 5 additionally recites “providing, by the accessory device, an aural indication that the accessory device and the companion device have paired.” The additional element is providing an aural indication of pairing completion. Audible notifications (chimes, beeps) upon pairing are well-understood, routine, and conventional in consumer electronics. This constitutes insignificant extra-solution activity (post-solution notification). Claim 5 does not amount to significantly more.
Claim 6 additionally recites “the aural indication comprises a chime, a ping, a beep, or a tune.” This merely enumerates conventional sound types for the notification of Claim 5. Claim 6 does not amount to significantly more.
Claim 7 additionally recites “the accessory device comprises a force sensor that detects a force or a pressure of an input on the touch-sensitive input.” Force sensors in wearable devices are well-understood, routine, and conventional. See Spec. ¶ [0036] (describing force sensors as standard components). Claim 7 does not amount to significantly more.
Claim 8 additionally recites “the accessory device comprises an intensity sensor to detect an intensity of an input on the touch-sensitive input, and wherein inputs of different intensities invoke different operations on the accessory device.” Intensity-sensitive touch inputs are well-understood, routine, and conventional in wearable devices. See Spec. ¶ [0048]. Claim 8 does not amount to significantly more.
Claim 9 additionally recites “further comprising a microphone.” A microphone is a well-understood, routine, and conventional hardware component. See Spec. ¶¶ [0040], [0051]. Claim 9 does not amount to significantly more.
Claim 10 additionally recites “the touch-sensitive input comprises a fingerprint input or a touch sensitive button, wherein an input on the fingerprint input or an input on the touch sensitive button, validates an intent of a user to purchase a product.” Fingerprint sensors and biometric validation are well-understood, routine, and conventional. See Purves ¶¶ [0058], [0077], [0136], [0156]. Using biometric input to validate user intent for a purchase is a conventional security practice in commercial transactions (e.g., Touch ID for purchases on Apple devices). Claim 10 does not amount to significantly more.
Claim 11 additionally recites “one or more keys are stored in a secure memory of a secure processor of the accessory device, and wherein the transaction is performed based at least in part on a signature generated with the one or more keys.”
The additional elements include: (1) a secure processor with secure memory storing cryptographic keys, and (2) performing the transaction using a cryptographic signature generated with those keys.
The Examiner notes that Claim 11 adds specific technological elements beyond the generic hardware of Claim 1. However, secure processors (e.g., secure enclaves, TPMs) and cryptographic signing for transaction authentication are well-understood, routine, and conventional security mechanisms. See Purves ¶¶ [0346], [0347], [0363], [0365], [0383] (describing cryptographic processing of keys for purchase transactions); Mehta, U.S. 2017/0140146 (encryption and authentication); Castinado, U.S. 9,554,274 (authentication levels on wearable devices). Taken in combination with the limitations of Claim 1, the ordered combination does not transform the abstract idea of a commercial purchase transaction into something significantly more — it merely adds a conventional security layer to a conventional purchase. Claim 11 does not amount to significantly more.
Claim 12 (Currently Amended – Independent Method Claim)
Claim 12 recites:
A method executed by one or more processors of an accessory device associated with a companion device, the method comprising: receiving, via a touch-sensitive input of the accessory device, a request to initiate a digital purchase; establishing a communication connection with a server of a cloud service provider via a wireless network interface of the accessory device; and transacting the digital purchase from the server without assistance from the associated companion device.
Step 1 – Statutory Category: Claim 12 is directed to a process (method), which is a statutory category. Step 1 is satisfied.
Step 2A, Prong 1 – Judicial Exception: The claim recites the same abstract idea as Claim 1: receiving a purchase request, establishing a connection to a server, and transacting a digital purchase. These are commercial/economic interactions (Methods of Organizing Human Activity). The claim recites a judicial exception.
Step 2A, Prong 2 – Integration into a Practical Application: The additional elements include:
one or more processors of an accessory device associated with a companion device
a touch-sensitive input of the accessory device
a wireless network interface of the accessory device
These are the same generic hardware components identified in Claim 1. The method claim merely recites the abstract idea as performed by generic hardware. The additional elements do not integrate the abstract idea into a practical application for the same reasons discussed with respect to Claim 1. The claim does not recite any specific technological mechanism (secure processor, cryptographic protocol, provisioning architecture) that would constitute an improvement to technology.
Step 2B – Significantly More: The additional elements are WURC for the same reasons discussed with respect to Claim 1. Generic processors, touch-sensitive inputs, and wireless network interfaces on wearable devices are conventional computer components performing their ordinary functions. The claim does not amount to significantly more.
Conclusion: Claim 12 is not patent eligible under 35 U.S.C. § 101.
Claims 13–15 (Dependent from Claim 12)
Claim 13 is the method analog of Claim 2 and is rejected for the same reasons. The additional limitations of sending a request for user input, receiving user input via a touch-sensitive input, and using that input to unlock securely stored keys describe a conventional authentication step that does not amount to significantly more.
Claim 14 is the method analog of Claim 3 and is rejected for the same reasons. Specifying that the accessory device is a wearable device is a field-of-use limitation.
Claim 15 is the method analog of Claim 4 and is rejected for the same reasons. Device pairing prior to server connection is a conventional step.
Claim 16 (Currently Amended – Independent CRM Claim)
Claim 16 recites:
A non-transitory machine-readable medium storing instructions which, when executed by one or more processors of an accessory device associated with a companion device, cause the one or more processors to perform operations comprising: receiving, via a touch-sensitive input of the accessory device, a request to initiate a digital purchase; establishing a communication connection with a server of a cloud service provider via a wireless network interface of the accessory device; and transacting the digital purchase from the server without assistance from the associated companion device.
Step 1 – Statutory Category: Claim 16 recites a “non-transitory machine-readable medium,” which is a manufacture. Step 1 is satisfied.
Step 2A, Prong 1 – Judicial Exception: The claim recites the same abstract idea as Claims 1 and 12. The claim recites a judicial exception.
Step 2A, Prong 2 – Integration into a Practical Application: The additional elements include:
a non-transitory machine-readable medium storing instructions
one or more processors of an accessory device associated with a companion device
a touch-sensitive input of the accessory device
a wireless network interface of the accessory device
These are generic computing components. A non-transitory machine-readable medium is a conventional storage medium. The remaining elements are the same generic hardware identified in Claims 1 and 12. The additional elements do not integrate the abstract idea into a practical application for the same reasons discussed above.
Step 2B – Significantly More: The additional elements are WURC for the same reasons discussed above. A non-transitory machine-readable medium is a conventional storage device. The claim does not amount to significantly more.
Conclusion: Claim 16 is not patent eligible under 35 U.S.C. § 101.
Claims 17–19 (Dependent from Claim 16)
Claim 17 is the CRM analog of Claims 2/13 and is rejected for the same reasons.
Claim 18 is the CRM analog of Claims 3/14 and is rejected for the same reasons.
Claim 19 is the CRM analog of Claims 4/15 and is rejected for the same reasons.
Claim 20 (New – Dependent from Claim 1)
Claim 20 recites: “The accessory device according to claim 1, wherein the accessory device is a thin accessory device, and wherein the accessory device is provisioned to make the digital purchase based on a password for the accessory device being entered on the companion device.”
Step 2A, Prong 1: The additional limitation describes a provisioning step in which “a password for the accessory device [is] entered on the companion device.” This describes a configuration/setup process for enabling commercial transactions — still within the Methods of Organizing Human Activity grouping (managing interactions between parties/devices for a commercial purpose).
Step 2A, Prong 2: The additional elements include:
a thin accessory device — This is merely a descriptive label for the type of device and constitutes a field-of-use limitation. The specification uses “thin” to describe a device with limited form factor (Spec. ¶ [0003]), not a specific technological architecture.
provisioning based on a password entered on the companion device — This describes a conventional provisioning/setup step (entering credentials on a companion device to configure a wearable). The claim does not recite the specific provisioning protocol (PET generation, token exchange, secure storage) described in Spec. ¶¶ [0024], [0092]–[0097].
The additional elements do not integrate the abstract idea into a practical application. They describe conventional device setup procedures at a high level of generality.
Step 2B: Password-based provisioning of wearable devices via a companion device is well-understood, routine, and conventional. See Purves ¶¶ [0126]–[0128]; Castinado, U.S. 9,554,274. The claim does not amount to significantly more.
Conclusion: Claim 20 is not patent eligible under 35 U.S.C. § 101.
Examiner NoteReasons for Withdrawal of Prior Art Rejections
Claims 1–20 were previously rejected under 35 U.S.C. § 102(a)(1) as anticipated by Purves et al. (US 2019/0244248). Upon further consideration and in view of Applicant’s amendments and remarks, the § 102 rejection is hereby withdrawn. Additionally, no § 103 rejection is being made at this time. The reasons are set forth below.
1. Purves Does Not Anticipate the Amended Claims
The Examiner has reconsidered the rejection in view of the amendments to independent claims 1, 12, and 16 and Applicant’s persuasive remarks. The amended claims now recite, inter alia:
“receive, via the touch-sensitive input, a request to initiate a digital purchase”
and
“transact the digital purchase from the server without assistance from the associated companion device.”
Purves (US 2019/0244248) discloses a Wearable Intelligent Vision Device (“WIVD”) system that communicates with a mobile device and a merchant system. While Purves teaches a WIVD watch form factor (¶[0057]-[0058]) with wireless communication (¶[0058]) and touch input (¶[0065]), the purchase transaction flows described in Purves at ¶¶[0346]-[0347] and FIGS. 38–43 are conducted via a mobile device or a merchant point-of-sale terminal — not via the WIVD watch acting through its own touch-sensitive input to initiate a digital purchase from a cloud-based digital content store.
Specifically:
(a) Purves ¶[0347] identifies the “user wallet device” conducting the transaction as “a personal/laptop computer, cellular telephone, smartphone, tablet, eBook reader, netbook, gaming console, and/or the like.” The WIVD watch itself is not listed as the transacting device.
(b) While Purves ¶[0063] states that the WIVD “may have sufficient local system resources . . . to . . . perform any other function performed by the mobile device 172,” this is a general capability statement that is never demonstrated in any purchase flow within Purves. No embodiment shows the WIVD receiving a purchase request via its own touch input and independently completing a digital purchase transaction from a cloud service provider.
© Purves is directed to physical retail shopping experiences (in-store augmented reality, barcode scanning, merchant POS transactions). The concept of purchasing digital content (applications, media) from a cloud-based digital store on the wearable device itself is absent from Purves.
(d) Applicant’s amended limitation “receive, via the touch-sensitive input, a request to initiate a digital purchase” requires that the purchase request originates at the wearable device’s own touch input. Purves does not disclose this.
Accordingly, Purves fails to disclose each and every limitation of independent claims 1, 12, and 16, and the § 102 rejection is withdrawn.
2. No Available Prior Art Combination Supports a § 103 Rejection
The Examiner has considered whether a combination of the cited prior art and other references of record would render the claims obvious. The following references were considered:
Purves (US 2019/0244248) — wearable device with payment system capabilities at physical merchant POS
Castinado (US 9,554,274) — wearable device authentication levels for financial transactions at merchant POS
Mehta (US 2017/0140146) — TPM-based key management for device encryption/recovery
Li (US 2019/0279637) — voice/touch task execution via simple codes
Zhang (US 2015/0186892) — voice verification for transactions between two devices
None of the available prior art, alone or in combination, teaches the specific combination of:
(i) An accessory device associated with a companion device (claims 1, 12, 16) or a wearable electronic device (parent patent claims);
(ii) That can independently transact digital purchases from a server of a cloud service provider (i.e., purchasing digital content such as applications or media from a cloud-based digital store);
(iii) Via touch-sensitive input on the wearable/accessory device itself (receiving a request to initiate the purchase directly on the device);
(iv) Without assistance from the associated companion device.
The critical missing element across all available prior art is the teaching of a wearable device independently purchasing digital content (apps, music, media) from a cloud-based digital content store. All available references that teach wearable device transactions (Purves, Castinado) are directed to physical retail/merchant POS transactions, not digital content purchases from a cloud store. References directed to security architectures (Mehta) do not address purchase transactions. References directed to task execution (Li) or transaction verification (Zhang) do not teach independent digital content purchasing on a wearable device.
Additionally, certain Apple-owned references that do teach the claimed subject matter — including Bradley (US 2022/0116438, priority January 22, 2019) and Belov (US 2020/0358769, priority May 6, 2019/June 1, 2019) — are disqualified as prior art under 35 U.S.C. § 102(b)(2)© because they are commonly owned with the application under examination.
Accordingly, no § 103 rejection is being made at this time.
Conclusion
Art cited but not relied upon pertinent to application disclosure includes Li et al., U.S. 2019/0279637 generally identifying a wearable device, biometrics and authentication; Mehta et al., U.S. 2017/0140146 generally identifying devices, encryption and authentication; Zhang et al., U.S. 2015/0186892 generally identifying user devices and transaction verification; and Castinado et al., U.S. 9,554,274 generally identifying authentication levels associated with a wearable device.
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.
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Mike Anderson
Supervisor Patent Examiner
Art Unit 3693
/Mike Anderson/Supervisory Patent Examiner, Art Unit 3693
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