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 Application
Claims 1-20 have been examined in this application.
The filling date of this application number recited above is 02-May-2023. Domestic Benefit/National Stage priority has been claimed for Continuation of 16/986,111 and 16/703,539, and Provisional 62/902,247 and 62/902,247 in the Application Data Sheet, thus the examination will be undertaken in consideration of 05-August-2020, 18-Septemer-2019, and 04-December-2019, as the priority date, for applicable claims.
The information disclosure statement (IDS) submitted on 12-September-2025 and 06-January-2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS are being considered by the examiner.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 4-9, 10-12, and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Miranda et al. (US 20160364938 A1), in view of Mossler et al. (US 10541995 B1), in view of Kim (KR 20160064061 A) in further view of Park (KR 20200020442 A), and in view of Osborn et al. (US 10733283 B1).
As per Claim 1, Miranda discloses a mobile device comprising:
a wireless chip structured to allow short-range wireless communications; a display; a processor; and a memory storing instructions that, when executed by the processor ([0025] "The system, indicated as a whole with the reference 10, includes a user terminal 11, such as a smart phone, i.e. a communication apparatus, in particular a wireless communication apparatus, such as a mobile phone, connected to a communication network, having computer capabilities, such as a storage memory and an operative system, and including the capability of loading, storing and executing a software application" wherein one of ordinary skill in the art would understand that a smart phone or a mobile phone having computer capabilities obviously comprises all the disclosed components, and [0025] "The user terminal 11 also includes a NFC (Near Field Communication) interface 11a, allowing it to communicate with NFC enabled devices, such as a payment card 13"), cause the processor to perform operations comprising:
based on a first short-range wireless communication between the mobile device and a contactless card, receiving a customer-specific uniform resource locator (URL) from the contactless card via the wireless chip ([0034] "After having received the payment card SC, the customer U, at step 160 taps the card on the user terminal 11, i.e. the NFC enabled smartphone, to read the content of the NDEF Tag 13b. The NDEF TAG application associated with the NDEF Tag 13b is customized with a specific activation URL (Uniform Resource Locator) string US" see Figure 2 - step 160);
in response to receiving the customer-specific URL, automatically navigating to a website associated with the customer-specific URL ([0035] "The user terminal 11, after the tapping step 160, launches at step 170 a navigation application, such as an Internet browser, with the activation URL US read from the payment card SC" see Figure 2 - step 170 and step 190);
receiving authentication information and automatically populating one or more fields on a graphical user interface (GUI) of the display with the received authentication information ([0044] "At step 220, the customer receives the message ASM with the activation code AS and fills the activation field I with it, submitting the page AP (for instance through the confirmation button CB shown in FIG. 3) and the code, as submitted activation code SS, before reaching the expiration time ET" see Figure 2 - step 220);
transmitting the received authentication information to a separate computing system ([0045] "The bank server 14, at step 230, checks that the submitted activation code SS is valid" see Figure 2 - step 230);
based on a verification of the authentication information, displaying, by the display, an indication of activation of the contactless card ([0047] "The bank server 14 finally, at step 250, notifies the customer U through the navigation application, giving access to a web page SP containing a text message indicating the success of the operation" see Figure 2 - step 250);
…
… based on at least a second short range wireless communication between the registered mobile device and the contactless card, providing a third GUI via the display … (See Figure 3 – steps 180 and 185 as disclosed [0036] “The bank server 14 at step 180 verifies the unique number UN, in particular checking if the unique number exists and if it is associated to a payment card SC never activated before … for instance the card's activation status AF and history AH, i.e. if it is a card which awaits the first activation or not” and [0037] “If the unique number UN is not positively verified, the bank remote server 14 gives access to a warning/error web page 185”).
Although Miranda teaches of activating a contactless card via NFC using a URL, the prior art does not seem to explicitly disclose of registering the mobile device with the activated contactless card. However, Mossler teaches of receiving a prompt to bind the device with the card, as disclosed:
in response to the activation of the contactless card, providing a second GUI using the customer-specific URL, the second GUI including a prompt to register the mobile device with the activated contactless card ([Col 5 Lines 24-32] “According to one aspect, binding the contactless card to the client includes associating the card with digital credentials and/or client devices. Associating the card with the digital credentials of the client may occur as part of an initial registration of the client with the service provider (i.e., a first access of an application service by the client) … In one embodiment at least one client device includes an interface for communicating with the contactless card”);
receiving, via the second GUI and in response to the prompt, information identifying the mobile device, wherein the information identifying the mobile device is stored at the separate computing system to register the mobile device with the activated contactless card ([Col 15 Lines 36-45] “At step 730, once the card is registered to the client, the client and card combination may be bound to one or more client device(s). For example, the digital identity may also include client device information such as a unique identifier associated with the user device (e.g., a telephone number, an Internet Protocol (IP) address, a network identifier, a mobile equipment identifier (MEID), an international mobile subscriber identity (IMSI), a serial number, a media access control (MAC) address, and/or the like)”); and
in response to registering the mobile device … wherein (i) the information identifying the registered mobile device is used to authenticate a user associated with the contactless card … to automatically grant access to the account via the online login portal ([Col 15 Lines 50-54] “Once the triangulation between the client, card and client device(s) has been established, at step 740 the contactless card may be used to support multi-factor secure password less login for client applications running on any client device”).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the method of binding the device information with the registered card for password-less logins as in Mossler in the system executing the method of Miranda, wherein Miranda already teaches of initiating activation of the transaction card through NFC communications and URL, with the motivation of offering to improve password-less authentication protocol as taught by Mossler over that of Miranda.
Miranda teaches a short range contactless communication after activation of the contactless card, as disclosed above, but does not seem to explicitly disclose that the second short range communication provides a different webpage from the same URL used by the card. However, Kim teaches the use of a secure URL-NFC payment card to provide additional services to the user using the same URL used by an activated card, specifically teaching in response to activating the contactless card and based on a second short range wireless communication between the mobile device and the contactless card, as disclosed:
… based on at least a second short range wireless communication between the registered mobile device and the contactless card ([Page 4 Line 1] “The smart device 200 receives the URL from the URL-NFC payment card by NFC communication” and also [Page 3 Lines 16-17] “providing a URL to a smart device through a URL-NFC payment card in NFC communication”), providing a third GUI via the display using the customer-specific URL, the third GUI including an online login portal for accessing an account that is associated with the contactless card … (See Figure 4, as disclosed [Page 5 Lines 45-49] “If the authentication information registered in the server 300 is identical to the authentication information registered in the server 300, a page for selecting main page movement reception or receipt of pending reservation pseudo information (S408) is transmitted to the smart device (S408). In step S408, when the payment plan information is received, the payment schedule information is provided to the payment server in step S411, while the page S412 for selecting the main page movement reception or termination is transmitted to the smart device 200, The main page is provided to the smart device (S409) so that the user can use the login main page (S410). If main page movement reception is selected in step S412, the main page is provided to the smart device (S409) so that the user can use the login main page”).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the URL-NFC payment card with the stored information from the supplementary server 300 to provide the login website as in Kim in the system executing the method of Miranda, by which the systems in Miranda teaches of the second short range contactless communication after activation of the contactless card as disclosed by Figure 3 and [0036-0037], with the motivation of offering to [Page 2 under Description] allow the merchant to save the cost of providing encryption/decryption system, and allow the customer with ease and time saving navigations of accessing card company webpages as taught by Kim over that of Miranda.
Although Kim discloses of using the NFC communications between the device and the card to access an account from the online login portal, which includes authenticating information that is already stored in the server as disclosed [Page 3 Lines 38-40] “When the authentication information of the URL-NFC payment card 100 transmitted by the user via the smart device 200 matches the information registered in the supplementary server 300, the additional server 300 is logged in”, the prior art does not seem to explicitly disclose of authenticating the user based on the information identifying the registered mobile device. However, Park teaches:
in response to registering the mobile device and based on at least a second short range wireless communication between the registered mobile device and the contactless card, providing a third GUI via the display using the customer-specific URL, the third GUI including an online login portal for accessing an account that is associated with the contactless card, wherein (i) the information identifying the registered mobile device is used to authenticate a user associated with the contactless card … to automatically grant access to the account via the online login portal ([Page 3 Lines 4-7] “In response to the URL, the Internet site is provided to the smart device by the URL-NFC payment card unit, the authentication information is confirmed, the login is accepted by the URL-NFC payment card unit, the main page information is provided to the smart device” wherein the information identifying the registered device is authenticated, as disclosed [Page 7 Lines 23-29] “The user identification information (or affiliated store identification information) is checked, and the mobile phone number and password registered in advance corresponding to the identified user identification information (or affiliated store identification information) are read from the database 130, and the corresponding confirmation. The mobile phone number and the password and the read mobile phone number and the password correspond to each other, and the confirmed user terminal 110 (or, the merchant terminal 140) is justified”).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the authentication of user identification information, such as phone number, using the stored data (i.e. registered device) for the account log-in process as in Park in the system executing the method of Kim, by which the systems in Miranda teaches of authenticating information associated with the NFC login process, with the motivation of offering to [Pages 2-3 under Background] improve security and reduce fraud transactions from theft and hacking as taught by Park over that of Kim.
Miranda teaches a short range contactless communication after activation of the contactless card, as disclosed above, but does not seem to explicitly disclose that the second short range communication automatically populates the password field on the login portal. However, Osborn teaches the use of a NFC enabled contactless card that securely stores and manages passwords, which is used to automatically populate the password through NFC communications, as disclosed:
in response to registering the mobile device and based on at least a second short range wireless communication between the registered mobile device and the contactless card, providing a third GUI via the display using the customer-specific URL, the third GUI including an online login portal for accessing an account that is associated with the contactless card, wherein … (ii) a password field displayed on the third GUI is automatically populated with information communicated via the second short range wireless communication to automatically grant access to the account via the online login portal (See Figure 7, as disclosed [Col 15 Lines 50-53] “In examples, the mobile computing device 704 may incorporate an autofill feature, where the password is auto-populated in the password field, when the contactless card 710 is re-tapped to the computing device 704, as shown” or see also [Col 16 Lines 63-67] “Moreover, in examples, when the contactless card is tapped to the computing device or placed within a threshold distance from the computing device, a password field corresponding to the application, website, file, or program with the password may be automatically filled or auto-populated”).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the autofill feature to auto-populate the password field when the card is tapped to the device as in Osborn in the system executing the method of Miranda, by which the systems in Miranda teaches of authenticating information associated with the NFC login process, with the motivation of offering to improve security, protection, and efficiency for password inputs in the login process as taught by Osborn over that of Miranda.
As per claim 4, Miranda may not explicitly disclose, but Kim teaches the mobile device of claim 1, wherein the customer-specific URL includes a unique value specific to a client that is appended to a general URL ([Page 3 Lines 52-53] “The URL serves as an ID when an additional service is provided as a unit of a URL-NFC payment card. If the URL is divided into URL-NFC payment cards, the URL can be used as an ID, Only one authentication information needs to be stored”).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the ID appended to the URL as in Kim in the system executing the method of Miranda, with the motivation of offering to [Page 2 under Description] allow the merchant to save the cost of providing encryption/decryption system, and allow the customer with ease and time saving navigations of accessing card company webpages as taught by Kim over that of Miranda.
As per claim 5, Miranda may not explicitly disclose, but Kim teaches the mobile device of claim 4, wherein navigating to the website associated with the customer-specific URL causes transmission of the unique value specific to the client to the separate computing system ([Page 4 Lines 1-4] “The smart device 200 receives the URL from the URL-NFC payment card by NFC communication, accesses the Internet site provided by the supplementary server 300, and transmits the authentication information or the payment due intention information of the URL-NFC payment card from the user And delivers it to the attachment server 300. In addition, the smart device 200 delivers the Internet page received from the supplementary server 300 to the user, and transmits the request and the intention of the user to the supplementary server 300”).
It would have been obvious to one of ordinary skill in the art at the time of the invention to transmit the ID or authentication information to the server as in Kim in the system executing the method of Miranda, with the motivation of offering to [Page 2 under Description] allow the merchant to save the cost of providing encryption/decryption system, and allow the customer with ease and time saving navigations of accessing card company webpages as taught by Kim over that of Miranda.
As per claim 6, Miranda teaches the mobile device of claim 1, wherein at least one of the first or second short-range wireless communications is near-field communication (NFC) ([0008] "The user terminal includes a corresponding contactless interface, in particular an NFC interface").
As per claim 7, Miranda teaches the mobile device of claim 6, wherein the mobile device provides power to the contactless card to enable the NFC transmission of the customer-specific URL from the contactless card to the mobile device ([0034] "After having received the payment card SC, the customer U, at step 160 taps the card on the user terminal 11, i.e. the NFC enabled smartphone, to read the content of the NDEF Tag 13b. The NDEF TAG application associated with the NDEF Tag 13b is customized with a specific activation URL (Uniform Resource Locator) string US" see Figure 2 - step 160).
It would have been obvious to one of ordinary skill in the art at the time of the invention that the mobile device provides power to the contactless card for NFC transmission, such as tapping, wherein this technology was already known in the field prior to the filing date of this application. See NPL (Robert Triggs, "All you need to know about NFC Tags", Android Authority, August 29, 2018, page 2) under "How it works" discloses (page 2 lines 14-19) "In order to power these NFC tags, electromagnetic induction is used to create a current in the passive device ... The active devices, such as your smartphone, are responsible for generating the magnetic field" or see also WALKER (U.S. 2019/0332912) which discloses [0033] "The NFC tag used in the instant invention is the component that stores the code to be read … The reading device creates an electromagnetic field by way of induction which is used to create a current in the antenna of the passive NFC device. This electromagnetic field actually powers the NFC tag so that its code can be read by the reading device"
As per claims 8 and 16, Miranda teaches a system comprising:
a processor; and a memory storing instructions that, when executed by the processor ([0026] "In FIG. 1, a bank server 14 is shown, i.e. a computer server" wherein one of ordinary skill in the art would understand that a computer server obviously comprises all the disclosed components. For non-transitory computer-readable medium see [0007] "One or more embodiments may refer to a non-transitory computer-readable medium storing instructions that, when executed, cause a computing device to perform steps"), cause the processor to perform operations comprising:
generating a customer-specific uniform resource locator (URL) for a contactless card that is embedded on the contactless card ([0028] "At step 110, a specific payment card SC, i.e. a payment card 13, which is assigned to a given user, is issued to a customer or cardholder, U" and [0029 lines 1-11] "At step 120, a unique number UN is generated at the bank, associated to the card … The unique number UN is generated starting from a progressive number. Each generated unique number UN is uniquely associated to the specific payment card SC" see Figure 2 step 110 and step 120);
storing, in a database, information regarding the customer, the information including data specific to the customer ([0030] "Then, at step 130 the bank server 14 stores an association table (database) between unique numbers UN and physical specific payment cards SC, i.e. containing pairs (SC, UN). In other words, the payment card data base 15 contains a data base record R for each payment card SC and the record R contains at least one field for storing the unique number UN corresponding to that payment card SC" see Figure 2 step 130);
based on a first short range contactless communication between a mobile device of the customer and the contactless card, receiving the data specific to the customer ([0034] "After having received the payment card SC, the customer U, at step 160 taps the card on the user terminal 11, i.e. the NFC enabled smartphone, to read the content of the NDEF Tag 13b. The NDEF TAG application associated with the NDEF Tag 13b is customized with a specific activation URL (Uniform Resource Locator) string US" see Figure 2 - step 160);
accessing, from the database, the information regarding the customer based on cross-referencing the data specific to the customer with information stored in the database ([0036] "The bank server 14 at step 180 verifies the unique number UN, in particular checking if the unique number exists and if it is associated to a payment card SC never activated before. This can be done in the payment card data base 15, which in an embodiment can include in the same record R, as shown in FIG. 4 other information pertaining to a given payment card SC, besides the unique number UN" see Figure 2 - step 180);
providing a graphical user interface (GUI) to the mobile device, the GUI including a prompt for authentication information (See Figure 3 displaying activation page prompting the user to insert card activation code);
receiving authentication information from the mobile device ([0044] "At step 220, the customer receives the message ASM with the activation code AS and fills the activation field I with it, submitting the page AP (for instance through the confirmation button CB shown in FIG. 3) and the code, as submitted activation code SS, before reaching the expiration time ET" see Figure 2 - step 220);
verifying the authentication information ([0045] "The bank server 14, at step 230, checks that the submitted activation code SS is valid. Preferably the submitted activation code SS is compared to the activation code AS stored in the database 15 in the corresponding field AS shown in FIG. 4, for the corresponding payment card SC" see Figure 2 - step 230 and Figure 4);
in response to verifying the authentication information, activating the contactless card for a subsequent use ([0046] "If the submitted activation code SS is correct, the bank server 14 activates, at step 240, the payment card into the payment card database 15, for instance by turning to active the corresponding activation status field AF (and a corresponding variable which is then read in the future card transactions) in the record of the payment card SC." see Figure 2 - step 240);
…
… based on at least a second short range contactless communication between the registered mobile device and the contactless card, providing a third GUI to the registered mobile device … (See Figure 3 – steps 180 and 185 as disclosed [0036] “The bank server 14 at step 180 verifies the unique number UN, in particular checking if the unique number exists and if it is associated to a payment card SC never activated before … for instance the card's activation status AF and history AH, i.e. if it is a card which awaits the first activation or not” and [0037] “If the unique number UN is not positively verified, the bank remote server 14 gives access to a warning/error web page 185”).
Although Miranda teaches of activating a contactless card via NFC using a URL, the prior art does not seem to explicitly disclose of registering the mobile device with the activated contactless card. However, Mossler teaches of receiving a prompt to bind the device with the card, as disclosed:
in response to the activation of the contactless card, providing … a second GUI including a prompt to register the mobile device with the activated contactless card ([Col 5 Lines 24-32] “According to one aspect, binding the contactless card to the client includes associating the card with digital credentials and/or client devices. Associating the card with the digital credentials of the client may occur as part of an initial registration of the client with the service provider (i.e., a first access of an application service by the client) … In one embodiment at least one client device includes an interface for communicating with the contactless card”);
receiving, via an interaction with the second GUI and in response to the prompt, information identifying the mobile device, wherein the information identifying the mobile device is stored in a database to register the mobile device with the activated contactless card ([Col 15 Lines 36-45] “At step 730, once the card is registered to the client, the client and card combination may be bound to one or more client device(s). For example, the digital identity may also include client device information such as a unique identifier associated with the user device (e.g., a telephone number, an Internet Protocol (IP) address, a network identifier, a mobile equipment identifier (MEID), an international mobile subscriber identity (IMSI), a serial number, a media access control (MAC) address, and/or the like)”); and
in response to registering the mobile device … wherein (i) the information identifying the registered mobile device is used to authenticate a user associated with the contactless card … to automatically grant access to the account via the online login portal ([Col 15 Lines 50-54] “Once the triangulation between the client, card and client device(s) has been established, at step 740 the contactless card may be used to support multi-factor secure password less login for client applications running on any client device”).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the method of binding the device information with the registered card for password-less logins as in Mossler in the system executing the method of Miranda, wherein Miranda already teaches of initiating activation of the transaction card through NFC communications and URL, with the motivation of offering to improve password-less authentication protocol as taught by Mossler over that of Miranda.
Miranda teaches a short range contactless communication after activation of the contactless card, as disclosed above, but does not explicitly teach that the second short range communication provides a different webpage from the same URL used by the card. However, Kim teaches the use of a secure URL-NFC payment card to provide additional services to the user using the same URL used by an activated card, specifically teaching in response to activating the contactless card and based on a second short range wireless communication between the mobile device and the contactless card, as disclosed:
… based on at least a second short range contactless communication between the registered mobile device and the contactless card ([Page 4 Line 1] “The smart device 200 receives the URL from the URL-NFC payment card by NFC communication” and also [Page 3 Lines 16-17] “providing a URL to a smart device through a URL-NFC payment card in NFC communication”), providing a third GUI to the registered mobile device using the customer-specific URL, the third GUI including an online login portal for accessing an account that is associated with the contactless card … (See Figure 4, as disclosed [Page 5 Lines 45-49] “If the authentication information registered in the server 300 is identical to the authentication information registered in the server 300, a page for selecting main page movement reception or receipt of pending reservation pseudo information (S408) is transmitted to the smart device (S408). In step S408, when the payment plan information is received, the payment schedule information is provided to the payment server in step S411, while the page S412 for selecting the main page movement reception or termination is transmitted to the smart device 200, The main page is provided to the smart device (S409) so that the user can use the login main page (S410). If main page movement reception is selected in step S412, the main page is provided to the smart device (S409) so that the user can use the login main page”).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the URL-NFC payment card with the stored information from the supplementary server 300 to provide the login website as in Kim in the system executing the method of Miranda, by which the systems in Miranda teaches of the second short range contactless communication after activation of the contactless card as disclosed by Figure 3 and [0036-0037], with the motivation of offering to [Page 2 under Description] allow the merchant to save the cost of providing encryption/decryption system, and allow the customer with ease and time saving navigations of accessing card company webpages as taught by Kim over that of Miranda.
Although Kim discloses of using the NFC communications between the device and the card to access an account from the online login portal, which includes authenticating information that is already stored in the server as disclosed [Page 3 Lines38-40] “When the authentication information of the URL-NFC payment card 100 transmitted by the user via the smart device 200 matches the information registered in the supplementary server 300, the additional server 300 is logged in”, the prior art does not seem to explicitly disclose of authenticating the user based on the information identifying the registered mobile device. However, Park teaches:
in response to registering the mobile device and based on at least a second short range contactless communication between the registered mobile device and the contactless card, providing a third GUI to the registered mobile device using the customer-specific URL, the third GUI including an online login portal for accessing an account that is associated with the contactless card, wherein (i) the information identifying the registered mobile device is used to authenticate a user associated with the contactless card … to automatically grant access to the account via the online login portal ([Page 3 Lines 4-7] “In response to the URL, the Internet site is provided to the smart device by the URL-NFC payment card unit, the authentication information is confirmed, the login is accepted by the URL-NFC payment card unit, the main page information is provided to the smart device” wherein the information identifying the registered device is authenticated, as disclosed [Page 7 Lines 23-29] “The user identification information (or affiliated store identification information) is checked, and the mobile phone number and password registered in advance corresponding to the identified user identification information (or affiliated store identification information) are read from the database 130, and the corresponding confirmation. The mobile phone number and the password and the read mobile phone number and the password correspond to each other, and the confirmed user terminal 110 (or, the merchant terminal 140) is justified”).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the authentication of user identification information, such as phone number, using the stored data (i.e. registered device) for the account log-in process as in Park in the system executing the method of Kim, by which the systems in Miranda teaches of authenticating information associated with the NFC login process, with the motivation of offering to [Pages 2-3 under Background] improve security and reduce fraud transactions from theft and hacking as taught by Park over that of Kim.
Miranda teaches a short range contactless communication after activation of the contactless card, as disclosed above, but does not seem to explicitly disclose that the second short range communication automatically populates the password field on the login portal. However, Osborn teaches the use of a NFC enabled contactless card that securely stores and manages passwords, which is used to automatically populate the password through NFC communications, as disclosed:
in response to registering the mobile device and based on at least a second short range contactless communication between the registered mobile device and the contactless card, providing a third GUI to the registered mobile device using the customer-specific URL, the third GUI including an online login portal for accessing an account that is associated with the contactless card, wherein … (ii) a password field displayed on the third GUI is automatically populated with information communicated via the second short range wireless communication to automatically grant access to the account via the online login portal (See Figure 7, as disclosed [Col 15 Lines 50-53] “In examples, the mobile computing device 704 may incorporate an autofill feature, where the password is auto-populated in the password field, when the contactless card 710 is re-tapped to the computing device 704, as shown” or see also [Col 16 Lines 63-67] “Moreover, in examples, when the contactless card is tapped to the computing device or placed within a threshold distance from the computing device, a password field corresponding to the application, website, file, or program with the password may be automatically filled or auto-populated”).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the autofill feature to auto-populate the password field when the card is tapped to the device as in Osborn in the system executing the method of Miranda, by which the systems in Miranda teaches of authenticating information associated with the NFC login process, with the motivation of offering to improve security, protection, and efficiency for password inputs in the login process as taught by Osborn over that of Miranda.
As per claim 9, Miranda teaches the system of claim 8, the memory storing instructions that, when executed by the processor, further cause the processor to perform operations comprising:
in response to activating the contactless card, providing a confirmation of activation of the contactless card for display on the mobile device ([0047] "The bank server 14 finally, at step 250, notifies the customer U through the navigation application, giving access to a web page SP containing a text message indicating the success of the operation" see Figure 2 - step 250).
As per claim 10, Miranda teaches the system of claim 8, the memory storing instructions that, when executed by the processor, further cause the processor to perform operations comprising:
in response to activating the contactless card, deactivating the customer-specific URL ([0036] "The bank server 14 at step 180 verifies the unique number UN, in particular checking if the unique number exists and if it is associated to a payment card SC never activated before … for instance the card's activation status AF and history AH, i.e. if it is a card which awaits the first activation or not" see Figure 4 "AH" and "AF" and Figure 2 - step 180 and step 185 wherein if the process determines that the card has already been activated, then the URL is led to a different web page such as a warning/error web page, therefore it is obvious that the customer-specific URL is then deactivated since the process will not allow to reach the webpage if the card had already been activated).
As per claim 11, Miranda may not explicitly disclose, but Mossler teaches the system of claim 8, wherein the identifying information regarding the mobile device is used to automatically grant access to the account associated with the contactless card ([Col 2 Lines 57-67 to Col 3 Lines 1-3] "Through NFC, a communication link is established between the contactless card and the application. After establishing the communication link, the card transmits cardholder data including a digital signature to the application. Based on the digital signature (e.g. upon authentication of the card), the application recognizes the card as belonging to a specific account server (e.g., associated with a specific customer account). The application communicates data associated with the card to the specific account server and requests activation of the card. The account server activates the card within its system and transmits an indication of the success of the activation to the application. The application then displays the status of the card activation to the user").
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the automatic access to the account associated with the contactless card as in Mossler in the system executing the method of Miranda, with the motivation of offering to [Col 1 Lines 16-29] improve security and user experience for activating a card and account access authentication methods as taught by Mossler over that of Miranda.
As per claim 12, Miranda teaches the system of claim 8, wherein the data specific to the customer excludes payment account information (see Figure 4 displaying appended data field specific to the customer such as: phone number and email, which does not include customer payment account information).
As per claim 14, Miranda teaches the system of claim 8, wherein at least one of the first or second short range wireless communications is a near-field communication tap ([0025] "Accordingly, an NFC capable device such as the user terminal 11 can read the content of the NFC Tag 13b by tapping the user terminal 11 device on the payment card 13").
As per claims 15 and 18, Miranda teaches the system of claim 14, and the non-transitory computer-readable medium of claim 16, wherein the data specific to the customer is one of a unique numeric or a unique alphanumeric value ([0029] "At step 120, a unique number UN is generated at the bank, associated to the card, by way of example 2A8E23C7D6492376872034DEF62A12FF. The unique number N is generated by a unique number generator 14a, which in FIG. 1 is shown included in the server 14. The unique number generator 14a is a software module that generates unique numbers, in particular starting from a progressive number").
As per claim 17, Miranda teaches the non-transitory computer-readable medium of claim 16, wherein the data specific to the customer includes information indicative of an identity of the customer (See Figure 4 displaying customer identity information, such as: customer phone number, customer email, etc.).
As per claim 19, Miranda teaches the non-transitory computer-readable medium of claim 16, further comprising instructions, that when executed by the one or more processors cause operations comprising:
providing a notification to the mobile device that the contactless card has been activated ([0047] "The bank server 14 finally, at step 250, notifies the customer U through the navigation application, giving access to a web page SP containing a text message indicating the success of the operation" see Figure 2 - step 250).
As per claim 20, Miranda teaches the non-transitory computer-readable medium of claim 16, wherein verifying the authentication information is based on the received authentication information matching information associated with the customer stored in the database ([0045] "The bank server 14, at step 230, checks that the submitted activation code SS is valid. Preferably the submitted activation code SS is compared to the activation code AS stored in the database 15 in the corresponding field AS shown in FIG. 4, for the corresponding payment card SC" see Figure 2 - step 230 and Figure 4).
Claims 2-3 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Miranda, in view of Mossler, in view of Kim in further view of Park, in view of Osborn, and in view of O'HARA et al. (US 20180285868 A1).
As per claim 2, Miranda may not explicitly disclose, but O’Hara teaches the mobile device of claim 1, the memory storing instructions that, when executed by the processor, further cause the processor to perform operations comprising:
encrypting the received authentication information before transmitting the received authentication information to the separate computing system ([0086] "At a next step 508, the mobile application 304 encrypts and communicates the NFC card data 308 and the DAC 307 to the remote server application 404 processed by the first remote server 101" see Figure 5 - step 508).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize encrypting the authentication information as in O’Hara in the system executing the method of Miranda with the motivation of offering to [0009] "mitigate the ergonomic deficiencies and other grounds of user unfriendliness inherent to the prior art techniques" as taught by O’Hara over that of Miranda.
As per claims 3 and 13, Miranda may not explicitly disclose, but O’Hara teaches the mobile device of claim 1, and the system of claim 8, wherein the authentication information is one of a personal identification number (PIN) or biometric information ([0022] "In an embodiment of the authenticating method, the step of inputting authenticating data in the personal computing device may comprise … capturing cardholder biometric data through the optical capturing means of the device").
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize biometric information as in O’Hara in the system executing the method of Miranda with the motivation of offering to [0009] "mitigate the ergonomic deficiencies and other grounds of user unfriendliness inherent to the prior art techniques" as taught by O’Hara over that of Miranda.
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(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).
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.
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.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11694188 (Application Number 16/986,111). Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed towards contactless communications between a card and a device for card activation and registration, wherein the registered device information is used to automatically grant access to the account for the login portal. While the claim limitations are not exactly the same, the present claims are broader and fully encompass the claims of the parent application.
Response to Arguments
Applicant’s arguments, see pages 9 to 13, with respect to 35 U.S.C. 103 rejection have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments, see page 13, with respect to the Double Patenting rejection have been fully considered but they are not persuasive. As discussed above:
“although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed towards contactless communications between a card and a device for card activation and registration, wherein the registered device information is used to automatically grant access to the account for the login portal. While the claim limitations are not exactly the same, the present claims are broader and fully encompass the claims of the parent application”
and no terminal disclosure has been filed to date. Therefore, the nonstatutory double patenting rejection is maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Kumar et al. (US 20190109842 A1) discloses [0030] “For example, when secondary user downloads the mobile payment application to a secondary computing device 112, the secondary user may be prompted to register credit or debit card information. If the secondary user has the primary user's credit or debit card information, the secondary user may enter the information into the secondary computing device 112 to register the card with the mobile payment systems application stored on the secondary computing device 112”.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENRY H JUNG whose telephone number is (571)270-5018. The examiner can normally be reached Mon - Fri 9:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine M Tran (Behncke) can be reached at (571) 272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HENRY H JUNG/ Examiner, Art Unit 3695
/CHRISTINE M Tran/ Supervisory Patent Examiner, Art Unit 3695