Detailed Action
Acknowledgements
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the Amendment filed on March 31, 2026.
Claims 1-32, 43-44, 48, and 50 are cancelled.
Claims 55-56 are added.
Claims 33-42, 45-47, 49, and 51-56 are pending.
Claims 33-42, 45-47, 49, and 51-56 are examined.
This Office Action is given Paper No. 20260413 for references purposes only.
IDS
The Information Disclosure Statement filed on January 30, 2026 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
Claim Objections
Claim 38 recites “a profile picture.” Examiner assumes that Applicant intended “the profile picture” to be consistent with the independent claim. Appropriate correction is required.
Claim 39 recites “a user.” Examiner assumes that Applicant intended “the user” to be consistent with the independent claim. Appropriate correction is required.
Claim Rejections - 35 USC § 112, 2nd paragraph
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 33-42, 45-47, 49, 51-52, and 54 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 pre-AIA the applicant regards as the invention.
Claim 33 recites “transmits a verification notification including the identity of the user account and the digital signature, to the third-party device wherein the third-party device signs a receipt document, for validating the contactless delivery associated with the user of the contactless card, using the digital signature.” This phrase renders the claim vague and indefinite because it is unclear whether the scope of the claim is drawn to the subcombination of "a contactless card”, “a user device”, and “a server" alone, or drawn to the combination of "a contactless card”, “a user device”, “a server", and “a third-party device.”
Based on the language of claim 33, one of ordinary skill in the art could reasonably conclude that the claim is directed to the subcombination alone because the preamble states “A contactless delivery system comprising… a contactless card… a user device… a server.” Furthermore, dependent claims 34-42, 45-47, and 49 are drawn to “the contactless delivery system of claim 33.”
Alternatively, the body of claim 33 recites “transmits a verification notification including the identity of the user account and the digital signature, to the third-party device wherein the third-party device signs a receipt document, for validating the contactless delivery associated with the user of the contactless card, using the digital signature.” Based upon this language, claim 33 is directed to the combination of "a contactless card”, “a user device”, “a server", and “a third-party device.”
Because a potential infringer of claim 33 would not know whether direct infringement required creation or possession of the subcombination alone (i.e. "a contactless card”, “a user device”, and “a server") or the combination of "a contactless card”, “a user device”, “a server", and “a third-party device”, claim 33 is indefinite under 35 U.S.C. §112 2nd paragraph.
If Applicant intends to claim only the subcombination (i.e. "a contactless card”, “a user device”, and “a server") in claim 33, then remove all positive recitations of “a third-party device” from the body of the claim. Alternatively, if Applicant intends to claim the combination of "a contactless card”, “a user device”, “a server", and “a third-party device”, then amend the preamble to objectively set forth this intent.
Claim 54 recites “receiving, by the server from the user device, the first cryptogram.” There is lack of antecedent basis for the term “the first cryptogram.” For purposes of applying the prior art only, Examiner will interpret as “a first cryptogram.”
Claim Rejections - 35 USC § 112d
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 40 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 40 recites “wherein the server: receives the first cryptogram from the user device, validates the first cryptogram, decrypts the first cryptogram, and extracts the unique identifier.”
Claim 40 depends upon independent claim 33, which already recites “wherein the server: receives the first cryptogram and the profile picture from the user device, decrypts, following a validation of the first cryptogram, the first cryptogram and extracts the unique identifier.”
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 33-42, 45-47, 49, and 51-56 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 2A Prong 1: The claims recite an abstract idea of verifying an identity of a user account, which is a certain method of organizing human activity (e.g. fundamental economic principles or practices including hedging, insurance, mitigating risk; commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, business relations; managing personal behavior or relationships or interactions between people including social activities, teaching, and following rules or instructions).
Claim 53, representative of claims 33 and 54, includes the following limitations:
Receiving a universal resource locator (URL) for card tapping, which is generated by a third party device, wherein the URL is associated with a webpage;
Transmitting the URL to a user device associated with a user of a contactless card, wherein the user device launches the webpage, which interacts with a web browser to trigger a near field communication (NFC) read operation;
Transmitting a first cryptogram including a unique identifier and a profile picture, stored on a contactless card, to the user device;
Forwarding the first cryptogram and the profile picture from the user device to the server;
Receiving the first cryptogram including the unique identifier;
Following a validation of the first cryptogram, decrypting the first cryptogram and extracting the unique identifier;
Verifying an identity of a user account based on the extracted unique identifier;
Generating a digital signature based on the identity of the user account.
Step 2A Prong 2: The claim limitations recite the following additional elements that are beyond the judicial exception:
A third-party device;
A user device;
A contactless card;
A server;
Near-field communication (NFC) field;
Transmitting a verification notification including the identity of the user account and the digital signature.
These additional elements are not indicative of integration into a practical application because:
They add the words “apply it” (or an equivalent) with the judicial exception, or are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. See MPEP 2106.05(f).
They generally link the use of the judicial exception to a particular technological environment or field of use. See MPEP 2106.05(h).
They add insignificant extra-solution activity to the judicial exception. Note that “extra-solution activity” can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity can include both pre-solution and post-solution activity. An example of pre-solution activity is a step of gathering data for use in a claimed process. An example of post-solution activity is an element that is not integrated into the claim as whole. See MPEP 2106.05(g).
Step 2B: The claim limitations do not recite additional elements, or an ordered combination of additional elements, that are sufficient to amount to significantly more than the judicial exception.
As discussed with respect to step 2A prong 2 above, the additional elements of “a third-party device”, “a user device”, “a contactless card”, and “a server” are mere instructions to apply an exception, and do not integrate a judicial exception into a practical application at step 2A or provide an inventive concept at step 2B.
According to the 2019 PEG, a conclusion that an additional element is mere instructions to apply an exception under step 2A should be re-evaluated at step 2B. Thus, the additional elements of “a third-party device”, “a user device”, “a contactless card”, and “a server” are re-evaluated to determine whether they constitute significantly more. Examiner finds that the additional elements of “a third-party device”, “a user device”, “a contactless card”, and “a server” are simply the use of a computer in its ordinary capacity and do not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262 and MPEP 2106.05(f). For example, the additional elements only provide a result-oriented solution and lack details as to how the computer performs the modifications, which is equivalent to “apply it”. See Alice Corp. v. CLS Bank, 134 S. Ct. 2347, 2357 and MPEP 2106.05(f).
As discussed with respect to step 2A prong 2 above, the additional element of a “near-field communication (NFC) field” generally links the use of the judicial exception to a particular technological environment or field of use, and does not integrate a judicial exception into a practical application at step 2A or provide an inventive concept at step 2B.
According to the 2019 PEG, a conclusion that an additional element is mere instructions to apply an exception under step 2A should be re-evaluated at step 2B. Thus, the additional element of a “near-field communication (NFC) field” is re-evaluated to determine whether it constitutes significantly more. Examiner finds that the additional element of a “near-field communication (NFC) field” is merely an attempt to limit the use of the abstract idea to a particular technological environment. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 and MPEP 2106.05(h). Additionally, a “near-field communication (NFC) field” merely limits the claims to the computer field. See FairWarning v. Iatric Sys., 839 F.3d 1089, 1094-95 and MPEP 2106.05(h).
As discussed with respect to step 2A prong 2 above, the additional element of “transmitting a verification notification including the identity of the user account and the digital signature” is extra solution activity that does not integrate a judicial exception into a practical application at step 2A or provide an inventive concept at step 2B.
According to the 2019 PEG, a conclusion that an additional element is insignificant extra solution activity under step 2A should be re-evaluated at step 2B. The limitation “transmitting a verification notification including the identity of the user account and the digital signature” is re-evaluated to determine whether it constitutes well-understood, routine, and conventional activity in the field. The “transmitting of data” is well-understood, routine, and conventional in the field. See Symantec, TLI Communications, and MPEP 2106.05(d). Thus, a conclusion that the limitation “transmitting… signature” is well-understood, routine, and conventional is supported under Berkheimer.
The dependent claims fail to cure this deficiency and are rejected accordingly.
Claim 34 recites storing information on a delivery package, which is well-understood, routine, and conventional. See Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 and MPEP 2106.05(d). Claim 34 also recites transmitting the notification and receiving information on the delivery package, which is well-understood, routine, and conventional. See Intellectual Ventures v. Symantec, 838 F.3d 1307, 1321 and MPEP 2106.05(d).
Claim 35 recites transmitting the notification, which is well-understood, routine, and conventional. See Intellectual Ventures v. Symantec, 838 F.3d 1307, 1321 and MPEP 2106.05(d). Claim 35 also recites displaying a signature on the third party device, which generally links the use of the judicial exception to a particular technological environment or field of use (e.g. merely an attempt to limit the use of the abstract idea to a particular technological environment). See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 and MPEP 2106.05(h).
Claim 36 recites querying a database, which is insignificant extra-solution activity (e.g. mere data gathering). See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, and MPEP 2106.05(g).
Claims 37-38 recite the different types of documents, which is merely describing data and further defining the abstract idea.
Claim 39 recites transmitting the first cryptogram to the user device, which is well-understood, routine, and conventional. See Intellectual Ventures v. Symantec, 838 F.3d 1307, 1321 and MPEP 2106.05(d).
Claim 40 recites the same limitations as the independent claim (please see corresponding 112d rejection), and does not add significantly more.
Claim 41 recites receiving first and second authentication factors, comparing the factors, and generating the digital signature, which is insignificant extra-solution activity (e.g. selecting a particular data source or type of data to be manipulated). See Electric Power Group, and MPEP 2106.05(g).
Claim 42 recites the authentication factors comprise a geo-signature, which is merely describing data and further defining the abstract idea.
Claim 45 recites the factor is a password, which is merely describing data and further defining the abstract idea.
Claim 46 recites the factor is a PIN, which is merely describing data and further defining the abstract idea.
Claim 47 recites the factor is a biometric feature, which is merely describing data and further defining the abstract idea.
Claim 49 recites the card contains a counter value and a plurality of keys, which is merely describing data and further defining the abstract idea. Claim 49 also recites generating the cryptogram, which is insignificant extra-solution activity (e.g. mere data gathering). See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, and MPEP 2106.05(g).
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 33-42, 45-47, 49, and 51-56 of the instant application are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of US patent 11,682,012.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the subject matter of the instant application would have been obvious to one of ordinary skill in the art in light of the disclosure of US patent 11,682,012.
The instant application is directed to receiving a URL generated by a third-party device, transmitting the URL to a user device wherein the URL launches a webpage, transmitting a first cryptogram and profile picture stored on a contactless card to the user device, forwarding the first cryptogram and profile picture to the server, receiving the first cryptogram and profile picture from the user device, decrypting the first cryptogram and extracting the unique identifier, verifying an identity of the user account, generating a digital signature, and transmitting a notification (see claim 53).
US patent 11,682,012 is directed to transmitting a profile picture and a cryptogram containing a unique identifier, receiving the profile picture and cryptogram, validating the cryptogram, decrypting the cryptogram, extracting the unique identifier, querying a database, receiving documents, receiving a URL from a delivery device, transmitting the URL to a user device, receiving card information, generating a digital signature, transmitting a verification notification, and receiving a picture of an employee (see claim 15).
The instant application would have been obvious to one of ordinary skill in the art in light of US patent 11,682,012 because both encompass receiving a URL from a third party device, transmitting the URL to a user device, receiving card information at the webpage, generating a digital signature based on the user account identity and the card information, and transmitting a verification notification (see claim 53 of instant application and claim 15 of US patent 11,682,012).
Response to Arguments
101 arguments
Applicant argues that the claimed invention is a technical solution that provides required authentication credentials in a social distancing scenario where close proximity for a direct short-range wireless retrieval of authentication credentials from a NFC-enabled contactless card is not available.
Examiner disagrees. The claims still recite an abstract idea of verifying an identity of a user account, which is a certain method of organizing human activity. The limitations are directed to receiving a URL, transmitting the URL to a user device, transmitting a first cryptogram and profile picture, forwarding the first cryptogram and profile picture to the server, receiving the first cyptogram, decrypting the first cryptogram and extracting a unique identifier, verifying a user identity, and generating a digital signature. Please see revised 101 rejection above. Note that some of Applicant’s arguments depend upon functional language (see claim interpretation below).
Claim Interpretation
Applicant is reminded that functional recitation(s) using the word and/or phrases “for”, “adapted to”, or other functional language (e.g. see claim 35 which recites “being used to”; claim 53 which recites “configured to”, “operative to”, and “for use in”; claim 54 which recites “configured to” and “for use in”) have been considered but are given little patentable weight because they fail to add any structural limitations and are thereby regarded as intended use language. To be especially clear, all limitations have been considered. However, a recitation of the intended use of the claimed product must result in a structural difference between the claimed product and the prior art in order to patentably distinguish the claimed product from the prior art. If the prior art structure is capable of performing the intended use, then it reads on the claimed limitation. In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) ("The manner or method in which such a machine is to be utilized is not germane to the issue of patentability of the machine itself.”); In re Otto, 136 USPQ 458, 459 (CCPA 1963). See also MPEP §§ 2106 II (C.), 2114 and 2115. Unless expressly noted otherwise by Examiner, the claim interpretation principles in the paragraph apply to all examined claims currently pending.
Examiner hereby adopts the following definitions under the broadest reasonable interpretation standard. In accordance with In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), Examiner points to these other sources to support her interpretation of the claims.1 Additionally, these definitions are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language. Finally, the following list is not intended to be exhaustive in any way:
configuration “(1) (A) (software) The arrangement of a computer system or component as defined by the number, nature, and interconnections of its constituent parts.” “(C) The physical and logical elements of an information processing system, the manner in which they are organized and connected, or both. Note: May refer to hardware configuration or software configuration.” IEEE 100 The Authoritative Dictionary of IEEE Standards Terms, 7th Edition, IEEE, Inc., New York, NY, Dec. 2000.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 of a general nature or relating to the status of this application or concerning this communication or earlier communications from Examiner should be directed to Chrystina Zelaskiewicz whose telephone number is 571-270-3940. Examiner can normally be reached on Monday-Friday, 9:30am-5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Neha Patel can be reached at 571-270-1492.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal/pair <http://pair-direct.uspto.gov>. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866.217.9197 (toll-free).
/CHRYSTINA E ZELASKIEWICZ/
Primary Examiner, Art Unit 3699
1 While most definition(s) are cited because these terms are found in the claims, Examiner may have provided additional definition(s) to help interpret words, phrases, or concepts found in the definitions themselves or in the prior art.
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