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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed on 2026-03-02 in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2026-02-09 has been entered.
Claim Status and Response to Arguments
In an amendment filed 2026-02-09 (“Remarks”), applicant amended claims 1-3, 8-10, and 15-16. Claims 1-21 are pending.
Applicant’s arguments with respect to claims 1-21 have been fully considered but they are not persuasive. Applicant alleges that “Goldthwaite does not teach, disclose, or suggest (i) determining, based in part on a transaction or a response to a first forward instruction, that an additional affirmation is to be obtained from a subscriber and (ii) response to determining that the additional affirmation is to be obtained from the subscriber, initiating transmission of a second forward instruction to the communications device, as recited in amended claim 1” (Remarks, pp. 8-9). However, as shown in the section Claim Rejections – 35 USC § 103 below, Goldthwaite discloses the features in at least Figs. 2A and 13 and ¶0051. Thus, the rejections are maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention, because the amendment(s) filed 2026-02-09 introduce new matter into the claims:
Independent claim 1, as amended, recites “transmitting, from the authenticator to the client computing resource, one or more second signals to indicate whether the authenticator has obtained a second response to the second forward instruction; determining whether to complete the authentication process of the subscriber based at least in part, on the one or more second signals indicating that an expected confirming response, an unexpected response, or an expected declining response has been received from the communications device”;
Independent claim 8, as amended, recites “transmit, from the authenticator to the client computing resource, one or more second signals to indicate whether the authenticator has obtained a second response to the second forward instruction; determine whether to complete the authentication process of the subscriber based, at least in part, on the one or more second signals”; and
Independent claim 15, as amended, recites “transmit, from the authenticator to the client computing resource, one or more second signals to indicate whether the authenticator has obtained a second response to the second forward instruction; …the one or more second signals to indicate that an expected confirming response, an unexpected response, or an expected declining response has been received from the communications device”.
Applicant alleged that the amendments did not introduce new matter to the disclosure (Remarks, p.8). However, applicant did not point out where support for the amendment(s) to the claims can be found in the disclosure as originally filed. Upon review of applicant’s disclosure, examiner could not find support for the amendment(s) noted above; specifically, examiner was unable to find mention of: one or more second signals sent from the authenticator to the client computing resource to indicate whether the authenticator has obtained a second response to the second forward instruction; that the second signals indicate an expected confirming response, an unexpected response, or an expected declining response has been received from the communications device; or that the determining whether to complete the authentication process of the subscriber is based at least in part on the one or more second signals.
Thus, independent claims 1, 8, and 15, as well as the dependent claims 2-7, 9-14, and 16-21, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. For the purposes of compact prosecution, the subject matter added to the claim(s) will be considered in making rejections based on prior art in this office action. Please see MPEP § 2163.06.
When an amendment is filed in reply to an objection or rejection based on 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, a study of the entire application is often necessary to determine whether or not “new matter” is involved. Applicant should therefore specifically point out the support for any amendments made to the disclosure, including limitations introduced to the claims in an amendment. Please see MPEP § 2163.
Claims 2, 9, and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Specifically, claim 2 recites the limitation “the forward instruction” in line 2; claim 9 recites the limitation “the forward instruction” in line 3; and claim 16 recites the limitation “the forward instruction” in line 3. There is insufficient antecedent basis for these limitation(s) in the claims: the independent claims 1, 8, and 15, from which claims 2, 9, and 16 depend, respectively, each recite a “first forward instruction” and a “second forward instruction”. Thus, it is unclear which “forward instruction” is being referred to in claims 2, 9, and 16. For this reason, claims 2, 9, and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 8-11, and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication No. 2004/0019564 to Goldthwaite et al. (“Goldthwaite”) in view of U.S. Patent No. 11,973,637 to Athalye et al. (“Athalye”).
As to claim 1 (and similarly applied to claims 8 and 15), Goldthwaite discloses a method of authenticating a subscriber participating in a transaction (Figs. 2A and 13; ¶0051, "authorization and authentication process for a customer initiated payment transaction 500"), the method comprising: initiating transmission of a first forward instruction from a cellular transceiver to a communications device (Figs. 2A and 13; ¶0051, "The payment server routes the payment request and mobile phone number to an authentication server (512). The authentication server sends an SMS message with the payment request via a wireless network to the mobile phone (514)"; Examiner notes that “[sending]…via a wireless network” must include “transmission… from a cellular transceiver”), the communications device being co-located with the subscriber (Figs. 2A and 13; ¶0037, "The authentication server 107 sends an SMS message to the customer's mobile phone 110 through an SMS carrier 109 (120). The customer 102 receives the SMS message"); waiting for a first response to the forward instruction from the subscriber (Figs. 2A and 13; ¶0051, "The mobile phone displays the SMS message to the customer (516) and requests authorization for the payment transaction by the customer (518)"); transmitting, from an authenticator to a client computing resource, one or more first signals to indicate whether the authenticator has obtained the first response to the first forward instruction (Figs. 2A and 13; ¶0051, "If the customer authorizes the payment transaction, i.e., a "yes" selection… An authentication client application stored in the mobile phone confirms the validity of the authentication (526). If the authentication is valid the mobile phone routes the payment transaction to the authentication server (530) and the authentication server routes it to the payment server (532)"); determining, based in part on the transaction or the first response, an additional affirmation is to be obtained from the subscriber (Figs. 2A and 13, steps 518-520; ¶0051, "If the customer does not authorize the payment transaction, i.e., a "no" selection, an error is displayed on the mobile phone and the customer is asked again to choose a new payment method (520)"); responsive to determining that the additional affirmation is to be obtained from the subscriber, initiating transmission of a second forward instruction from the cellular transceiver to the communications device (Figs. 2A and 13; ¶0051. Examiner notes that in case of a "no" selection at steps 518-520, the steps 504-518 are repeated; thus, steps 512-514 would correspond to transmission of a second forward instruction from the cellular transceiver to the communications device); transmitting, from the authenticator to the client computing resource, one or more second signals to indicate whether the authenticator has obtained a second response to the second forward instruction (Figs. 2A and 13; ¶0051. Examiner notes that in case of a "no" selection at steps 518-520, the steps 504-518 are repeated; in the case of a "yes" selection the second time step 518 is executed, then steps 526-532 correspond to the authenticator transmitting one or more second signals to the client computing resources to indicate whether the authenticator has obtained a second response to the second forward instruction); determining whether to complete the authentication process of the subscriber based, at least in part, on the one or more second signals (Figs. 2A and 13; ¶0051, "If the authentication is valid the mobile phone routes the payment transaction to the authentication server (530) and the authentication server routes it to the payment server (532)… The payment server routes the authorized and authenticated payment transaction to the financial institution (534)". Examiner notes that in the case of a "no" selection at steps 518-520, the steps 504-518 are repeated; in the case of a "yes" selection the second time step 518 is executed, the authorization step 534 is performed based at least in part on the one or more second signals) indicating that an expected confirming response, an unexpected response, or an expected declining response has been received from the communications device (Figs. 2A and 13; ¶0051, "The mobile phone displays the SMS message to the customer (516) and requests authorization for the payment transaction by the customer (518) by selecting 'yes' or 'no'").
Goldthwaite does not disclose: switching a mode of communication with the communications device responsive to receiving the unexpected response from the communications device.
However, Athalye discloses: switching a mode of communication with the communications device responsive to receiving the unexpected response from the communications device (Fig. 15; Col. 11: line 40 through Col. 12: line 6).
Goldthwaite and Athalye are considered to be similar to the claimed invention because they are in one or more of the same fields of: systems and methods specially adapted for administrative, commercial, financial, managerial or supervisory purposes; security arrangements, authentication, protecting privacy, and maintaining anonymity in wireless communication networks; network architectures or network communication protocols for network security and for the authentication of entities; transmission of digital information and arrangements for detecting or preventing errors in the information received; and network fault recovery by performing the actions predefined by failover planning, e.g. switching to standby network elements. As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Goldthwaite to incorporate the teachings of Athalye to include: switching a mode of communication with the communications device responsive to receiving the unexpected response from the communications device. Doing so would solve the problem of "current systems [utilizing] only preset communication channels for certain communications…[and] current systems [being] not able to determine whether a communication was received and [being] not capable of adjusting communication channels based on system feedback" (Athalye, Col. 1: lines 27-32).
Examiner notes that one of ordinary skill in the art would understand that the merchant server, authentication server, payment server, and mobile phone as described above must include one or more processors coupled to one or more memories and/or one or more non-transitory storage media having instructions stored thereon executable by a processor to carry out the method as described above. Additionally, examiner notes that Goldthwaite discloses that the determination whether to complete the authentication process of the subscriber may be based, at least in part, on either the first or second signals and that either or both of the first and/or seconds signals indicate that an expected confirming response, an unexpected response, or an expected declining response has been received from the communications device (Goldthwaite, Figs. 2A and 13; ¶0051). Thus, claims 8 and 15 are similarly rejected.
As to claim 2 (and similarly applied to claims 9 and 16), Goldthwaite in view of Athalye discloses the method of claim 1, further comprising: prior to initiating transmission of the forward instruction from the cellular transceiver (Goldthwaite, Figs. 2A and 13; ¶0051, "The payment server routes the payment request and mobile phone number to an authentication server (512). The authentication server sends an SMS message with the payment request via a wireless network to the mobile phone (514)"), obtaining one or more third signals to indicate the subscriber initiating a transaction (Goldthwaite, Figs. 2A and 13; ¶0051, "After having placed an order, the customer is asked to choose a payment method for the goods and/or services and he chooses to pay with his mobile phone (504)… The merchant sends a payment request and the mobile phone number to a payment server (510)").
As to claim 3 (and similarly applied to claims 10 and 17), Goldthwaite in view of Athalye discloses the method of claim 1, wherein the expected declining response is based, at least in part, on a user interface of the communications device receiving input signals from the subscriber, the input signals to indicate a subscriber instruction not to complete authentication (Goldthwaite, Figs. 2A and 13; ¶0051, "The mobile phone displays the SMS message to the customer (516) and requests authorization for the payment transaction by the customer (518) by selecting 'yes' or 'no'").
As to claim 4 (and similarly applied to claims 11 and 18), Goldthwaite in view of Athalye discloses the method of claim 3, wherein the unexpected response comprises one or more alphanumeric characters (Goldthwaite, Figs. 2A and 13; ¶0051, "In addition to the payment card information, the customer is asked to enter a personal identification number (PIN) to complete the authentication process (524)") and wherein at least one of the one or more alphanumeric characters is different from at least one expected alphanumeric character (Goldthwaite, Figs. 2A, 8 and 13; ¶0051, "In the cases when the customer does not authorize payment, payment card is not present, or the PIN number is either not entered or is incorrect, the authentication client application 150 sends an error message to the authentication server 107").
Claims 5, 12, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Goldthwaite in view of Athalye and further in view of U.S. Patent Publication No. 2017/0357971 to Pitz et al. (“Pitz”).
As to claim 5 (and similarly applied to claims 12 and 19), Goldthwaite in view of Athalye discloses the method of claim 1.
Goldthwaite in view of Athalye does not disclose: wherein the unexpected response comprises a response from a cellular communications network to indicate that a response has not been received from the communications device during a predetermined time period.
However, Pitz discloses: wherein the unexpected response comprises a response from a cellular communications network to indicate that a response has not been received from the communications device during a predetermined time period (Fig. 3C; ¶0095, "In step 346, the processing server may include a timer, clock, or be otherwise configured to determine whether an authentication response message is received within a time period following the transmission of an authentication request message. If a predetermined time period lapses and no authentication response message has been received, the processing server may transmit a final transaction message with a recommendation to deny transaction processing").
Goldthwaite, Athalye, and Pitz are considered to be similar to the claimed invention because they are in one or more of the same fields of: systems and methods specially adapted for administrative, commercial, financial, managerial or supervisory purposes; security arrangements, authentication, protecting privacy, and maintaining anonymity in wireless communication networks; network architectures or network communication protocols for network security and for the authentication of entities; transmission of digital information and arrangements for detecting or preventing errors in the information received; and network fault recovery by performing the actions predefined by failover planning, e.g. switching to standby network elements. As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Goldthwaite in view of Athalye to incorporate the teachings of Pitz to include: wherein the unexpected response comprises a response from a cellular communications network to indicate that a response has not been received from the communications device during a predetermined time period. Doing so would provide "a technical solution that can ameliorate unnecessary network traffic and other problems associated with misidentified fraudulent transaction attempts as well as increase accuracy in properly identifying transactions which are fraudulent. Further, there is a need for a technical solution that can intercept a decision provided by a fraud engine and perform processing steps to ensure that the fraud engine decision is adequate (e.g., to avoid falsely identifying a transaction as fraudulent)" (Pitz, ¶0008).
Claims 6, 7, 13, 14, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Goldthwaite in view of Athalye and further in view of U.S. Patent Publication No. 2023/0022762 to Schwoerer et al. (“Schwoerer”).
As to claim 6 (and similarly applied to claims 13 and 20), Goldthwaite in view of Athalye discloses the method of claim 1.
Goldthwaite in view of Athalye does not disclose: further comprising the authenticator determining degradation of an audio signal from the communications device and, in response, transitioning to an exclusively text-based communications scheme between the communications device and the authenticator.
However, Schwoerer discloses: further comprising the authenticator determining degradation of an audio signal from the communications device and, in response, transitioning to an exclusively text-based communications scheme between the communications device and the authenticator (Fig. 4b; ¶0093-95, "a communication starting under very good connection conditions (for example, a two-way telephone conversation with high audio quality) may change to a communication with a progressively deteriorating audio quality… If the link quality continues to further deteriorate and no longer enables a semi-duplex audio conversation to be maintained, the conversation may change, transparently and without the initiative of the participants in conversation mode, by the exchange of text messages").
Goldthwaite, Athalye, and Schwoerer are considered to be similar to the claimed invention because they are in one or more of the same fields of: systems and methods specially adapted for administrative, commercial, financial, managerial or supervisory purposes; security arrangements, authentication, protecting privacy, and maintaining anonymity in wireless communication networks; network architectures or network communication protocols for network security and for the authentication of entities; transmission of digital information and arrangements for detecting or preventing errors in the information received; and network fault recovery by performing the actions predefined by failover planning, e.g. switching to standby network elements. As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Goldthwaite in view of Athalye to incorporate the teachings of Schwoerer to include: further comprising the authenticator determining degradation of an audio signal from the communications device and, in response, transitioning to an exclusively text-based communications scheme between the communications device and the authenticator. Doing so would "advantageously [make] it possible to choose dynamically the communication mode presenting the best comfort, while remaining compatible with the features of the current link" (Schwoerer, ¶0093).
As to claim 7 (and similarly applied to claims 14 and 21), Goldthwaite in view of Athalye and further in view of Schwoerer discloses the method of claim 6, wherein the exclusively text-based communications scheme includes two-way messaging communications between the communications device and the authenticator (Goldthwaite, Fig. 2A; ¶0037, "The authentication system 108 includes an authentication server 107 that is adapted to send and receive messages in a short message service (SMS) format to a mobile phone 110 via an SMS carrier 109").
References Cited
Athalye, Aditya Ajay et al. (2024). System and method for fallback communications using composite and concurrent state machines (US 11,973,637 B1). Filed 2022-11-22.
Goldthwaite, Scott et al. (2004). System and method for payment transaction authentication (US 2004/0019564 A1). Filed 2002-07-26.
Pitz, Cindi et al. (2017). Methods and system for real-time fraud decisioning based upon user-defined valid activity location data (US 2017/0357971 A1). Filed 2016-06-14.
Schwoerer, Jean et al. (2023). Method for managing communication between terminals in a telecommunications system and devices for implementing the method (US 2023/0022762 A1). Filed 2020-12-14.
Other Pertinent References
The following prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
Bertolus, Sylvain (2015). System for performing secure large monetary transactions through mobile communication devices (US 2015/0032606 A1). Filed 2014-07-24.
Bhupathiraju, Sridhar et al. (2017). Authentication of a user using a security device (US 2017/0244692 A1). Filed 2016-02-24.
Ben Ayed, Mourad (2015). Method for changing authentication for a legacy access interface (US 9,032,498 B1). Filed 2014-05-25.
Brunner, Christopher J. (2016). Methods and systems for message-based bill payment (US 2016/0321624 A1). Filed 2016-04-29.
Eckel, Robert Andrew et al. (2021). System and method for transaction authentication (US 10,943,233 B2). Filed 2019-05-31.
Hutchinson, SHAWN (2019). Secure authentication and financial attributes services (US 2019/0392447 A1). Filed 2018-01-26.
Kirillin, Viacheslav et al. (2013). Authentication of mobile device (US 2013/0139222 A1). Filed 2011-11-29.
Moharana, Sukumar et al. (2022). Method and electronic device for managing private content (US 2022/0277091 A1). Filed 2022-05-10.
Mutisya, Samson (2017). Device and system for electronic fund transfer (US 2017/0076275 A1). Filed 2015-03-10.
Marenick, Michael (2016). Systems and methods for sending payment data using a mobile electronic device to transact with other computing devices (US 2016/0012433 A1). Filed 2015-07-09.
Rahman, Muhammad Tawhidur (2021). Communication fallback in 5g systems and methods (US 11,115,877 B2). Filed 2019-04-01.
Sarin, Pankaj (2017). Leased device operations to a nearby device on detection of device inoperability (US 2017/0316418 A1). Filed 2016-04-27.
Seal, D. (2020). Secure pin entry via moble device (US 2020/0279265 A1). Filed 2019-03-01.
Shauh, Jack et al. (2019). Mobile payment system and method using a mobile payment device without an installed application (US 2019/0130384 A1). Filed 2018-10-26.
Torres Da Silveira, Bernardo Joao et al. (2019). System and method for point of sale transactions using wireless device with security circuit (US 2019/0205859 A1). Filed 2018-12-28.
Varadarajan, Srinivasan (2017). Secure multi-factor user authentication on disconnected mobile devices (US 2017/0109742 A1). Filed 2015-10-20.
Weiner, Avish Jacob et al. (2013). System and method for secure transaction process via mobile device (US 8,346,672 B1). Filed 2012-04-10.
Win, Tun Tun et al. (2018). Mobile payment system (US 2018/0247296 A1). Filed 2016-10-27.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAM LEONARD whose telephone number is (571)272-5720. The examiner can normally be reached Monday-Friday, 7am-4pm (PT).
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/SAMUEL H. LEONARD/Examiner, Art Unit 2649
/YUWEN PAN/Supervisory Patent Examiner, Art Unit 2649
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