Remarks
Claims 21-40 are pending.
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 .
Claim Interpretation
Non-transitory computer-readable media (and similar language) have been construed in their BRI to be only statutory media.
The claims include subject matter that does not have any effect on the scope of the claims, such as “that is temporarily stored in a user’s virtual wallet” in the first limitation of claim 1, which is directed to “receiving … an exchange request … indicative of a … UUEK” and the intended use of temporary storage in a user’s virtual wallet does not have any effect on the scope of receiving the UUEK. This is simply an example.
Information Disclosure Statement
With the exception of any exceptions noted below, any IDSes have only been reviewed inasmuch as the Examiner has time to review such. Text searching may have been performed on the IDS documents and/or NPL documents may have only been reviewed inasmuch as they have been found via separate NPL searching. The Examiner has not confirmed that the IDSes include properly cited references (e.g., that each document has the specified date, properly names inventors, etc.) nor has the Examiner read every word in every document.
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 21, 31, and 39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12, and 16 of copending Application No. 18/652,359 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims include all subject matter in the instant claims with additional subject matter. Claim 21 corresponds to claim 1, claim 31 corresponds to claim 12, and claim 39 corresponds to claim 16.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to omit the additional subject matter of claim 1 of the patent based on the legal precedent that elimination of a step or an element and its function is obvious if the function is not desired. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21-23, 29-32, and 39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 14, 17, and 19 of U.S. Patent No. 11.909.733. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims include all subject matter in the instant claims with additional subject matter. Claim 21 corresponds to claim 1, claim 29 corresponds to claim 2, claim 30 corresponds to claim 3, claim 22 corresponds to claim 4, claim 23 corresponds to claim 5, claim 31 corresponds to claim 14, claim 32 corresponds to claim 17, and claim 39 corresponds to claim 19.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to omit the additional subject matter of claim 1 of the patent based on the legal precedent that elimination of a step or an element and its function is obvious if the function is not desired. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989).
Claims 21, 31, and 39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12, and 17, respectively, of U.S. Patent No. 11,997,105. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims include all subject matter in the instant claims with additional subject matter.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to omit the additional subject matter of claim 1 of the patent based on the legal precedent that elimination of a step or an element and its function is obvious if the function is not desired. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989).
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 31-38 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because while claim 31 purports to be a computing system, the body of the claim only includes method steps. The preamble mentions “memory and one or more processors”, however, this is merely in the preamble and the preamble does not all have patentable weight (e.g., the memory has no patentable weight). Moreover, elements such as those in the preamble are not inherently physical (e.g., word processors, human brain being a processor, etc.). None of claims 32-38 fix this issue and they are rejected for the same reasons.
Claim Rejections - 35 USC § 102
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 following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 21-25, 27-35, and 37-40 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Osterkamp (U.S. Patent 12,333,533).
Regarding Claim 21,
Osterkamp discloses a computer implemented method comprising:
Receiving, by one or more processors, an exchange request for executing a value based exchange, wherein the exchange request is indicative of a UUEK that is temporarily stored in a user’s virtual wallet (Exemplary Citations: for example, Abstract, Column 4, lines 35-51; Column 6, line 53 to Column 7, line 13; Column 7, line 44 to Column 8, line 10; Column 8, line 59 to Column 9, line 3; Column 10, line 21 to Column 11, line 5; Column 12, line 50 to Column 13, line 20; Column 14, lines 14-30; and associated figures; any device receiving a request for a transaction with a token from the user’s wallet, for example);
Identifying, by the one or more processors, an exchange identifier based at least in part on the UUEK, wherein the exchange identifier corresponds to an exchange data object that comprises an instrument identifier for a service provider instrument of a member platform (Exemplary Citations: for example, Abstract, Column 4, lines 35-51; Column 6, line 53 to Column 7, line 13; Column 7, line 44 to Column 8, line 10; Column 8, line 59 to Column 9, line 22; Column 10, line 21 to Column 11, line 28; Column 12, line 50 to Column 13, line 20; Column 14, lines 14-30; and associated figures; token, portion of token (e.g., the first digit in the token may correspond to the facilitating server and the rest would then correspond to the account), account info, user info, etc., as examples);
Providing, by the one or more processors, an exchange authorization request indicative of the instrument identifier to the member platform (Exemplary Citations: for example, Abstract, Column 4, lines 35-51; Column 6, line 53 to Column 7, line 13; Column 7, line 44 to Column 8, line 10; Column 8, line 59 to Column 9, line 22; Column 10, line 21 to Column 11, line 28; Column 12, line 50 to Column 13, line 20; Column 14, lines 14-30; and associated figures; sending the token up the line for authorization, asking user to authorize the transaction prior to allowing it to occur, determining if enough funds, if the time is prior to expiration of the token, checking geographic area, checking other rules, etc., as examples);
Receiving, by the one or more processors, an exchange authorization response that is indicative of at least one of an approval or a denial (Exemplary Citations: for example, Abstract, Column 4, lines 35-51; Column 6, line 53 to Column 7, line 13; Column 7, line 44 to Column 8, line 10; Column 8, line 59 to Column 9, line 22; Column 11, lines 6-53; Column 12, line 50 to Column 13, line 30; Column 14, lines 14-30; and associated figures; response, such as authentication from user, authentication confirmation, transaction approval, etc., as examples); and
Providing, by the one or more processors, an exchange response based at least in part on the exchange authorization response, wherein the exchange response is indicative of the approval or the denial (Exemplary Citations: for example, Abstract, Column 4, lines 35-51; Column 6, line 53 to Column 7, line 13; Column 7, line 44 to Column 8, line 10; Column 8, line 59 to Column 9, line 22; Column 11, lines 6-53; Column 12, line 50 to Column 13, line 30; Column 14, lines 14-30; and associated figures; authentication confirmation, approval, etc., as examples; authentication confirmation, transaction approval, etc., as examples).
Regarding Claim 31,
Claim 31 is a system claim that corresponds to method claim 21 and is rejected for the same reasons.
Regarding Claim 39,
Claim 39 is a medium claim that corresponds to method claim 21 and is rejected for the same reasons.
Regarding Claim 22,
Osterkamp discloses that the exchange data object comprises one or more exchange attributes that are indicative of an expiration status, and the computer implemented method further comprises validating the UUEK based at least in part on the expiration status (Exemplary Citations: for example, Abstract, Column 4, line 52 to Column 5, line 11; Column 8 line 47 to Column 9, line 22; Column 9, line 33 to Column 10, line 20; Column 11, lines 29-53; Column 12, lines 4-21; Column 13, lines 53-67; and associated figures; verifying time is within time before token expires, for example).
Regarding Claim 32,
Claim 32 is a system claim that corresponds to method claim 22 and is rejected for the same reasons.
Regarding Claim 23,
Osterkamp discloses modifying the expiration status to invalidate the UUEK (Exemplary Citations: for example, Abstract, Column 4, line 52 to Column 5, line 11; Column 8 line 47 to Column 9, line 22; Column 9, line 33 to Column 10, line 20; Column 11, lines 29-53; Column 12, lines 4-21; Column 13, lines 53-67; and associated figures; expiring the token, removing the account, removing the token, etc., as examples).
Regarding Claim 33,
Claim 33 is a system claim that corresponds to method claim 23 and is rejected for the same reasons.
Regarding Claim 24,
Osterkamp discloses that the expiration status is based at least in part on a valid time period for the UUEK (Exemplary Citations: for example, Abstract, Column 4, line 52 to Column 5, line 11; Column 8 line 47 to Column 9, line 22; Column 9, line 33 to Column 10, line 20; Column 11, lines 29-53; Column 12, lines 4-21; Column 13, lines 53-67; and associated figures).
Regarding Claim 34,
Claim 34 is a system claim that corresponds to method claim 24 and is rejected for the same reasons.
Regarding Claim 25,
Osterkamp discloses that the UUEK corresponds to a UUEK representation within the user’s virtual wallet (Exemplary Citations: for example, Abstract, Column 4, lines 35-51; Column 6, line 53 to Column 7, line 13; Column 7, line 44 to Column 8, line 10; Column 8, line 59 to Column 9, line 3; Column 10, line 21 to Column 11, line 5; Column 12, line 50 to Column 13, line 20; Column 14, lines 14-30; and associated figures).
Regarding Claim 35,
Claim 35 is a system claim that corresponds to method claim 25 and is rejected for the same reasons.
Regarding Claim 27,
Osterkamp discloses that the UUEK representative comprises a virtual widget (Exemplary Citations: for example, Abstract, Column 4, lines 35-51; Column 6, line 53 to Column 7, line 13; Column 7, line 44 to Column 8, line 10; Column 8, line 59 to Column 9, line 3; Column 10, line 21 to Column 11, line 5; Column 12, line 50 to Column 13, line 20; Column 14, lines 14-30; and associated figures).
Regarding Claim 37,
Claim 37 is a system claim that corresponds to method claim 27 and is rejected for the same reasons.
Regarding Claim 28,
Osterkamp discloses that the UUEK is received from a client device using a near field communication protocol (Exemplary Citations: for example, Abstract, Column 3, line 60 to Column 4, line 9; Column 4, lines 35-51; Column 6, line 4 to Column 7, line 13; Column 7, line 44 to Column 8, line 10; Column 10, lines 21-42; Column 12, lines 50-63; Column 14, lines 14-30; and associated figures).
Regarding Claim 38,
Claim 38 is a system claim that corresponds to method claim 28 and is rejected for the same reasons.
Regarding Claim 29,
Osterkamp discloses that the UUEK comprises a partner partition that identifies a partner platform, the instrument identifier comprises an instrument key for the member platform, and the computer implemented method further comprises (Exemplary Citations: for example, Abstract, Column 4, lines 35-51; Column 6, line 53 to Column 7, line 13; Column 7, line 44 to Column 8, line 10; Column 8, line 59 to Column 9, line 22; Column 10, line 21 to Column 11, line 28; Column 12, line 50 to Column 13, line 20; Column 14, lines 14-30; and associated figures; token, portion of token (e.g., the first digit in the token may correspond to the facilitating server and the rest would then correspond to the account), account info, user info, etc., as examples):
Identifying a system instrument data object based at least in part on the instrument key (Exemplary Citations: for example, Abstract, Column 4, lines 35-51; Column 6, line 53 to Column 7, line 13; Column 7, line 44 to Column 8, line 10; Column 8, line 59 to Column 9, line 22; Column 10, line 21 to Column 11, line 28; Column 12, line 50 to Column 13, line 20; Column 14, lines 14-30; and associated figures; this could be lookup of user info, or lookup of account info using user info, etc., for example); and
Generating the exchange authorization request based at least in part on the system instrument data object (Exemplary Citations: for example, Abstract, Column 4, lines 35-51; Column 6, line 53 to Column 7, line 13; Column 7, line 44 to Column 8, line 10; Column 8, line 59 to Column 9, line 22; Column 10, line 21 to Column 11, line 28; Column 12, line 50 to Column 13, line 20; Column 14, lines 14-30; and associated figures; authorization as above based on the just described data, for example).
Regarding Claim 40,
Claim 40 is a medium claim that corresponds to method claim 29 and is rejected for the same reasons.
Regarding Claim 30,
Osterkamp discloses that the UUEK comprises a service provider partition that identifies a service provider platform and the computer implemented method comprises (Exemplary Citations: for example, Abstract, Column 4, lines 35-51; Column 6, line 53 to Column 7, line 13; Column 7, line 44 to Column 8, line 10; Column 8, line 59 to Column 9, line 22; Column 10, line 21 to Column 11, line 28; Column 12, line 50 to Column 13, line 20; Column 14, lines 14-30; and associated figures):
Identifying the member platform based at least in part on the service provider partition (Exemplary Citations: for example, Abstract, Column 4, lines 35-51; Column 6, line 53 to Column 7, line 13; Column 7, line 44 to Column 8, line 10; Column 8, line 59 to Column 9, line 22; Column 10, line 21 to Column 11, line 28; Column 12, line 50 to Column 13, line 20; Column 14, lines 14-30; and associated figures);
Identifying a system instrument data object based at least in part on the member platform and the exchange identifier (Exemplary Citations: for example, Abstract, Column 4, lines 35-51; Column 6, line 53 to Column 7, line 13; Column 7, line 44 to Column 8, line 10; Column 8, line 59 to Column 9, line 22; Column 10, line 21 to Column 11, line 28; Column 12, line 50 to Column 13, line 20; Column 14, lines 14-30; and associated figures); and
Generating the exchange authorization request based at least in part on the system instrument data object (Exemplary Citations: for example, Abstract, Column 4, lines 35-51; Column 6, line 53 to Column 7, line 13; Column 7, line 44 to Column 8, line 10; Column 8, line 59 to Column 9, line 22; Column 10, line 21 to Column 11, line 28; Column 12, line 50 to Column 13, line 20; Column 14, lines 14-30; and associated figures).
Claim Rejections - 35 USC § 103
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.
Claims 26 and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Osterkamp in view of Arnold (U.S. Patent Application Publication 2022/0076255).
Regarding Claim 26,
Osterkamp discloses that the UUEK representation comprises a machine readable representation (Exemplary Citations: for example, Abstract, Column 4, lines 35-51; Column 6, line 53 to Column 7, line 13; Column 7, line 44 to Column 8, line 10; Column 8, line 59 to Column 9, line 3; Column 10, line 21 to Column 11, line 5; Column 12, line 50 to Column 13, line 20; Column 14, lines 14-30; and associated figures);
But does not explicitly disclose that the machine readable representation comprises a machine readable optical image.
Arnold, however, discloses that the machine readable representative comprises a machine readable optical image (Exemplary Citations: for example, Paragraphs 45, 46, 59, 60, 181, 196, and associated figures; reading QR code including transaction information, for example). It would have been obvious to one of ordinary skill in the art at the time of applicant’s invention, which is before any effective filing date of the claimed invention, to incorporate the QR code usage techniques of Arnold into the digital wallet system of Osterkamp in order to allow transaction information and tokens to be easily transferred between machines using additional techniques, to increase the extensibility of the system to users that wish to use displayed QR codes to authorize transactions, and/or to increase security in the system. Alternatively, it would have been obvious to one of ordinary skill in the art at the time of applicant’s invention, which is before any effective filing date of the claimed invention, to perform a simple substitution of the transfer means (e.g., mag stripe, NFC) in Osterkamp with another transfer means (QR code of Arnold). Use of QR codes to transfer information between devices is ubiquitous in mobile computing devices and one of ordinary skill in the art would readily use this technique to transfer information between a mobile device and another entity.
Regarding Claim 36,
Claim 36 is a system claim that corresponds to method claim 26 and is rejected for the same reasons.
Conclusion
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/Jeffrey D. Popham/Primary Examiner, Art Unit 2432