Detailed Action
I. ACKNOWLEDGEMENTS
This Office Action addresses U.S. Application No. 18/379485 (“’485 Application” or “instant application”). Based upon a review of the instant application, the actual filing date of the instant application is October 12, 2023. For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
The instant application is a reissue application of US Patent 9,311,659 (“659 Patent”), which was filed as application 14/083344 (the ‘344 application) on November 18, 2013 and is entitled “REMOTE TRANSACTION PROCESSING AT A SERVER FROM A LIST USING A PAYMENT METHOD.”
Based upon Applicant’s statements as set forth in the instant application and after the
Examiner's independent review of the ‘659 Patent itself and its prosecution history, the Examiner finds that he cannot locate any ongoing proceeding before the Office or current ongoing litigation involving the ‘659 Patent. Also based upon the Examiner's independent review of the ‘659 Patent itself and the prosecution history, the Examiner cannot locate any previous reexaminations, supplemental examinations.
This action is being issued following Applicant’s response of 1/21/2026, which included: 1) a claim listing and 2) arguments.
This action is being made non-final to address the new art rejections listed below.
II. STATUS OF CLAIMS
The ‘659 Patent issued with claims 1-19 (“Patented Claims”). The reissue has made no amendments to the claims. As such, as of the date of this Office Action, the status of the claims is:
a. Claims 1-19 (“Pending Claims”).
b. Claims 1-19 are examined on the merits below (“Examined Claims”)
III. CONTINUING DATA AND PRIORITY
This application is a reissue of application 14/083344, filed 11/18/2023, which is a continuation of US application 13/735337, filed 1/7/2013, which is a continuation of US application 11/948903, which was filed 11/30/2007. Because the earliest possible effective filing date of this instant application is before March 16, 2013, the pre-AIA First Inventor to Invent provisions do apply to this application.
In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the prior applications. Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record in the prior applications are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the prior applications need not be resubmitted in this application unless Applicant(s) desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, Applicant(s) are reminded that the prosecution histories of the prior applications are relevant in this application.
IV. REISSUE DECLARATION
The reissue oath/declaration filed 1/21/2026 is approved.
V. 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.
The Examiner notes that in reviewing the prosecution history of the patent family associated with the ‘659, the following double patenting rejections were deemed to be applicable.
Claims 1, 2, 4-8, 11, 12, 14-16, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-43 of U.S. Patent No. 10,248,939. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader versions of the patented claims, and, as such, are covered by the patented clams. For example, see the analysis with respect to claim 1 below:
Current claims
10,248,939
Claim 1
Claim 1
A method for processing a transaction, comprising:
A method for processing a transaction, comprising:
sending a list of products from a management server to a non-browser based application for display using the non-browser based application, wherein the non-browser based application is preinstalled or downloaded and installed in a mobile device memory included in a mobile device, the mobile device comprising a mobile device display, a mobile device processor, a mobile device radio interface, and a mobile device wireless fidelity (Wi-Fi) interface;
after the user authentication, sending a list of products from the remote management server to the non-browser based application generated screen for display using the non-browser based application generated screen
wherein the non-browser based application is a mobile operating system platform non-browser based mobile application with a graphical user interface that is preinstalled or downloaded and installed on a mobile device,
the mobile device including the mobile device display, a mobile device processor, a mobile device wireless transceiver configured to support voice and data interactions through a first wireless communication channel including at least one of CDMA and GSM, and a mobile device wireless fidelity (Wi-Fi) transceiver;
receiving, at the management server, an identification of one or more products selected from the list of products using the non-browser based application through user input via the mobile device display; :
receiving, at the remote management server an identification of one or more products selected from a list of products, from the non-browser based application generated screen, wherein the non-browser based application generated screen receives the identification of one or more products selected from the list of products through the user input via the mobile device display of the mobile device
receiving, at the management server, a transaction purchase request from the non-browser based application stored on the mobile device, wherein the non-browser based application stored on the mobile device receives the transaction purchase request through user input via the mobile device display;
receiving, at the remote management server a transaction purchase request from the non-browser based application generated screen, wherein the non-browser based application generated screen receives the transaction purchase request through the user input via the mobile device display of the mobile device
receiving, at the management server, transaction verification from a transaction server which processes the transaction using a payment method, wherein the transaction verification indicates that the transaction has processed;
after receiving the transaction purchase request, transmitting, from the remote management server the payment method to a transaction server which processes the transaction using the payment method; receiving, at the remote management server, a transaction verification from the transaction server, wherein the transaction verification indicates that the transaction has been processed
and after the transaction has processed, sending, from the management sever, to the non-browser based application a digital artifact for display within a specific non-browser based application generated screen.
after the transaction has been processed, sending, from the remote management server to the non-browser based application generated screen, a digital artifact for display within the non-browser based application generated screen using the mobile device display.
Claims 1, 2, 5-12 and 15-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-41 of U.S. Patent No. 10,248,938. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader versions of the patented claims, and, as such, are covered by the patented clams.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-40 of U.S. Patent No. 10,692,063. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader versions of the patented claims, and, as such, are covered by the patented clams. The claims of the ‘063 patent do not recite that the management server receives a verification from the transaction server. However, the claims do recite sending the transaction to the transaction server, and after the transaction has been processed, sending a digital artifact to the mobile device. This requires some sort of notification or verification that the transaction has processed.
Claims 1, 8, and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-35 of U.S. Patent No. 10,699,259. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader versions of the patented claims, and, as such, are covered by the patented clams.
Claims 1 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18 and 25 of U.S. Patent No. 10,825,007. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader versions of the patented claims, and, as such, are covered by the patented clams.
Claims 1-4, 11-14, and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-53 of U.S. Patent No. 11,475,425. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader versions of the patented claims, and, as such, are covered by the patented clams.
Claims 1-4, 11-14, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-40 of U.S. Patent No. 11,599,865. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader versions of the patented claims, and, as such, are covered by the patented clams. The claims of the ‘865 patent do not recite that the management server receives a verification from the transaction server. However, the claims do recite sending the transaction to the transaction server, and after the transaction has been processed, sending a digital artifact to the mobile device. This requires some sort of notification or verification that the transaction has processed.
Claims 1, 2, 4, 11, 12, 14, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 11,610,190. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader versions of the patented claims, and, as such, are covered by the patented clams. The claims of the ‘910 patent do not recite that the management server receives a verification from the transaction server. However, the claims do recite sending the transaction to the transaction server, and after the transaction has been processed, sending a digital artifact to the mobile device. This requires some sort of notification or verification that the transaction has processed.
Claims 1-4, 8, 11-14, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-44 of U.S. Patent No. 11,704,642. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader versions of the patented claims, and, as such, are covered by the patented clams. The claims of the ‘642 patent do not recite that the management server receives a verification from the transaction server. However, the claims do recite sending the transaction to the transaction server, and after the transaction has been processed, sending a digital artifact to the mobile device. This requires some sort of notification or verification that the transaction has processed.
Claims 1-4, 8, 11-14, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-44 of U.S. Patent No. 11,829,972. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader versions of the patented claims, and, as such, are covered by the patented clams.
Claims 1-4, 8, 11-14, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11,966,897. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader versions of the patented claims, and, as such, are covered by the patented clams.
VI. ART REJECTIONS
Rejections using Gautier and Steinmetz
Claims 1, 2, 4, 8-12, 14, and 16-19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US PG Pub 2005/0021478 to Gautier et al in view of US PG PUB 2008/0010191 to Rackley III et al and Steinmetz US PG PUB 2006/0020559.
Referring to claim 1, Gautier discloses a method for processing a transaction, comprising:
sending a list of products from the remote management server to a browser based application for display using the non-browser based application, wherein the browser based application is a mobile operating system platform based mobile application preinstalled or downloaded and installed in a mobile device memory included in a mobile device; (See paragraphs [0049], [0051], [0054], [0056], [0057], [0094], [0101], Figs. 7B, 11C, 13A). However, Steinmetz teaches in paragraph [0222] that is known to use a non-browser based application for financial transactions online, including E-commerce transactions. Hence, it would have been obvious to modify Gautier to use a non-browser based application, as it is merely the use of a well known application for the purposes of Gautier.
receiving, at a remote management server, an identification of one or more products selected from the list of products from the non-browser based application stored on the mobile device, wherein the non-browser based application stored on the mobile device receives the identification of one or more products selected from the list of products through the user input via the mobile device; (See paragraphs [0056], [0057], [0081]).
receiving, at the remote management server, a transaction purchase request from the non-browser based application stored on the mobile device, wherein the non-browser based application stored on the mobile device receives the transaction purchase request through the user input of the mobile device; and (See paragraphs [0057], [0058], [0064], [0066] )
after the transaction has processed, sending, from the management sever, to the non-browser based application a digital artifact, i.e. the actual media and the media information mentioned in paragraph [0060] for display within a specific non-browser based application generated screen.
Gautier does not explicitly disclose the limitations:
the mobile device including the mobile device display, a mobile device processor, a mobile device radio transceiver that supports voice and data interactions through a first communication channel device using at least one of GSM and CDMA, and a mobile device wireless fidelity (Wi-Fi) transceiver;
input via a mobile device display;
receiving, at a remote management server, a coupon from the non-browser based application stored on the mobile device, wherein the non-browser based application stored on the mobile device receives the coupon through the user input via the mobile device display of the mobile device;
receiving, at the management server, a transaction verification from a transaction server which processes the transaction using a payment method, wherein the transaction verification indicates that the transaction has processed.
Rackley teaches a method with the limitations:
the mobile device including the mobile device display, a mobile device processor, a mobile device radio transceiver that supports voice and data interactions through a first communication channel device using at least one of GSM and CDMA, and a mobile device wireless fidelity (Wi-Fi) transceiver; (See paragraphs [0166], [0169], [0175], [0176]).
input via a mobile device display; and (See paragraphs [0022], [0128], [0134] – Most modern device possess touchscreen configured for user input.)
receiving, at the management server, a transaction verification from a transaction server which processes the transaction using a payment method, wherein the transaction verification indicates that the transaction has processed. (See paragraphs [0362], [0366-0368]).
One of ordinary skill in the art would have recognized that applying the known technique of Rackley to Gautier would have yielded predictable results and resulted in an improved system. It would have been recognized that applying the technique of Rackley to the teaching of Gautier would have yielded predictable results because the level of ordinary skill in the art demonstrated by the reference applied shows the ability to incorporate such payment processing procedure. Further, applying the payment processing feature to Gautier would have been recognized by one of ordinary skill in the art as resulting in an improved system that would allow processing a transaction based on one or more payment methods
As to claim 2, Gautier teaches in paragraph [0058] that an authentication information is entered at the media player and sent to the media server, i.e. the management server. Hence, the management server authenticates the user to permit the transaction.
As to claim 4, Gautier does not specify what information is used to authenticate the user. However, Rackley teaches in paragraphs [0336], [0337], and [0342], using a PIN number to authenticate the user. As such, it would have been obvious to modify Gautier to use a pin number, as it is merely th4r use of a well-known authentication method in the art.
As to claim 8, the digital artifact in Gautier is media or content.
Referring to claim 9, Gautier discloses the method of claim 1, wherein the payment method is a default payment method. (See paragraphs [0053], [0066], [0072], [0073] – A prepaid credit may be associated with the user account wherein the cost of purchased media are deducted).
Referring to claim 10, the combination of the combination does not explicitly disclose the limitation: wherein the payment method is a user selected payment method. Rackley further teaches a method with the limitation: wherein the payment method is a user selected payment method.(See paragraphs [0338], [0347], [0364]). It would have been obvious to modify the combination to incorporate a payment selection feature as in Rackley with the motivation of associating with a user’s account one or more payment methods applicable to processing purchase transactions.
Claims 11, 12, 14, and 16-19 are rejected for the reasons given above.
Claims 3 and 13 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Gautier in view of Rackley and Steinmetz, as applied to claims 1, 2, 4, 8-12, 14, and 16-19 above, and further in view of U.S. Patent Appl. Pub. No. 2008/0046366 to Bemmel et al.
The combination does not teach using biometric data as part of the authentication. However, Bemmel teaches in paragraphs [0060]-[0064], using the biometrics as login data. As such, it would have been obvious to modify the combination to use biometric data, as it is merely the substitution of one type of login data for another.
Claims 5-7 and 15 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Gautier in view of Rackley and Steinmetz, as applied to claims 1, 2, 4, 8-12, 14, and 16-19 above, and further in view of U.S. Patent Appl. Pub. No 2008/0114695 to Gutierrez.
As to claims 5, 7 and 15, the combination does not base the digital media on targeting parameters. However, Gutierrez teaches in paragraph [0069] sending a purchase receipt when purchasing media online. As such, it would have been obvious to modify the combination to send such a receipt, as it is a well-known business practice in the art. The Examiner notes that the receipt is based upon a historical payment transaction or a contactless payment, or information related to e-commerce. As such, the receipt is based on targeting parameters.
As to claim 6, the targeting parameters are transaction related, and therefore need not meet the personal information part of the claim.
Rejections using Gautier and Steinmetz
Claims 1, 2, 4, 8-12, 14, and 16-19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US PG Pub 2005/0021478 to Gautier et al in view of US PG PUB 2008/0010191 to Rackley III et al and Hayashi et al US PG PUB 2006/0095339.
Referring to claim 1, Gautier discloses a method for processing a transaction, comprising:
sending a list of products from the remote management server to a browser based application for display using the non-browser based application, wherein the browser based application is a mobile operating system platform based mobile application preinstalled or downloaded and installed in a mobile device memory included in a mobile device; (See paragraphs [0049], [0051], [0054], [0056], [0057], [0094], [0101], Figs. 7B, 11C, 13A). However, Hayashi teaches in paragraph [0043] that using a non-browser based application for financial transactions online, including purchase, has advantages of browser based applications, such as providing a better user interface. Hence, it would have been obvious to modify Gautier to use a non-browser based application, to provide a better user interface. Alternatively, it is merely the use of a well-known application for the purposes of Gautier.
receiving, at a remote management server, an identification of one or more products selected from the list of products from the non-browser based application stored on the mobile device, wherein the non-browser based application stored on the mobile device receives the identification of one or more products selected from the list of products through the user input via the mobile device; (See paragraphs [0056], [0057], [0081]).
receiving, at the remote management server, a transaction purchase request from the non-browser based application stored on the mobile device, wherein the non-browser based application stored on the mobile device receives the transaction purchase request through the user input of the mobile device; and (See paragraphs [0057], [0058], [0064], [0066] )
after the transaction has processed, sending, from the management sever, to the non-browser based application a digital artifact, i.e. the actual media and the media information mentioned in paragraph [0060] for display within a specific non-browser based application generated screen.
Gautier does not explicitly disclose the limitations:
the mobile device including the mobile device display, a mobile device processor, a mobile device radio transceiver that supports voice and data interactions through a first communication channel device using at least one of GSM and CDMA, and a mobile device wireless fidelity (Wi-Fi) transceiver;
input via a mobile device display;
receiving, at a remote management server, a coupon from the non-browser based application stored on the mobile device, wherein the non-browser based application stored on the mobile device receives the coupon through the user input via the mobile device display of the mobile device;
receiving, at the management server, a transaction verification from a transaction server which processes the transaction using a payment method, wherein the transaction verification indicates that the transaction has processed.
Rackley teaches a method with the limitations:
the mobile device including the mobile device display, a mobile device processor, a mobile device radio transceiver that supports voice and data interactions through a first communication channel device using at least one of GSM and CDMA, and a mobile device wireless fidelity (Wi-Fi) transceiver; (See paragraphs [0166], [0169], [0175], [0176]).
input via a mobile device display; and (See paragraphs [0022], [0128], [0134] – Most modern device possess touchscreen configured for user input.)
receiving, at the management server, a transaction verification from a transaction server which processes the transaction using a payment method, wherein the transaction verification indicates that the transaction has processed. (See paragraphs [0362], [0366-0368]).
One of ordinary skill in the art would have recognized that applying the known technique of Rackley to Gautier would have yielded predictable results and resulted in an improved system. It would have been recognized that applying the technique of Rackley to the teaching of Gautier would have yielded predictable results because the level of ordinary skill in the art demonstrated by the reference applied shows the ability to incorporate such payment processing procedure. Further, applying the payment processing feature to Gautier would have been recognized by one of ordinary skill in the art as resulting in an improved system that would allow processing a transaction based on one or more payment methods
As to claim 2, Gautier teaches in paragraph [0058] that an authentication information is entered at the media player and sent to the media server, i.e. the management server. Hence, the management server authenticates the user to permit the transaction.
As to claim 4, Gautier does not specify what information is used to authenticate the user. However, Rackley teaches in paragraphs [0336], [0337], and [0342], using a PIN number to authenticate the user. As such, it would have been obvious to modify Gautier to use a pin number, as it is merely th4r use of a well-known authentication method in the art.
As to claim 8, the digital artifact in Gautier is media or content.
Referring to claim 9, Gautier discloses the method of claim 1, wherein the payment method is a default payment method. (See paragraphs [0053], [0066], [0072], [0073] – A prepaid credit may be associated with the user account wherein the cost of purchased media are deducted).
Referring to claim 10, the combination of the combination does not explicitly disclose the limitation: wherein the payment method is a user selected payment method. Rackley further teaches a method with the limitation: wherein the payment method is a user selected payment method.(See paragraphs [0338], [0347], [0364]). It would have been obvious to modify the combination to incorporate a payment selection feature as in Rackley with the motivation of associating with a user’s account one or more payment methods applicable to processing purchase transactions.
Claims 11, 12, 14, and 16-19 are rejected for the reasons given above.
Claims 3 and 13 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Gautier in view of Rackley and Steinmetz, as applied to claims 1, 2, 4, 8-12, 14, and 16-19 above, and further in view of U.S. Patent Appl. Pub. No. 2008/0046366 to Bemmel et al.
The combination does not teach using biometric data as part of the authentication. However, Bemmel teaches in paragraphs [0060]-[0064[], using the biometrics as login data. As such, it would have been obvious to modify the combination to use biometric data, as it is merely the substitution of one type of login data for another.
Claims 5-7 and 15 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Gautier in view of Rackley and Steinmetz, as applied to claims 1, 2, 4, 8-12, 14, and 16-19 above, and further in view of U.S. Patent Appl. Pub. No 2008/0114695 to Gutierrez.
As to claims 5, 7 and 15, the combination does not base the digital media on targeting parameters. However, Gutierrez teaches in paragraph [0069] sending a purchase receipt when purchasing media online. As such, it would have been obvious to modify the combination to send such a receipt, as it is a well-known business practice in the art. The Examiner notes that the receipt is based upon a historical payment transaction or a contactless payment, or information related to e-commerce. As such, the receipt is based on targeting parameters.
As to claim 6, the targeting parameters are transaction related, and therefore need not meet the personal information part of the claim.
VII. ANSWER TO ARGUMENTS
With respect to the double patenting rejections, Applicant has asserted that the Examiner has not provided evidence as to why the variations in the claims are obvious. Specifically, Applicant has taken issue with the Examiner’s statements that the current claims are broader versions of the patented claims, and are therefore covered by the patented claims. Applicant has further argued that a narrow species can be non-obvious and patentable over a broader genus claim. However, this is not the current case. The current situation is whether a broader genus can be patentable over a narrow claim to a narrower species.
Applicant has noted that each of the 10 patents used in the double patenting rejections require user authentication. Specifically, Applicant points to claim 1 of the ‘939 patent, which recites authenticating a user associated with the user input login information. Applicant has argued that user authentication is non-obvious.
It is the Examiner’s position that whether the patents that serve as the basis for the double patenting rejection have extra non-obvious features is not relevant to prosecution. The prior patented claims serve as the basis of the rejection. The issue is whether the current claims are non-obvious over the prior claims, and not vice-versa. All of the elements of the current claims are recited in the patented claims, with the patented claims reciting extra elements. Therefore, nothing in the current claims is non-obvious over the patented claim.
The Examiner has added an analysis of claim 1 above. As can be seen in the claim chart, all of the current limitations are present in the patented claims. As such, the current claims are broader versions of the patented claims and are covered by the patented claims, meaning that nothing in the current claims are non-obvious over the patented claims. Applicant has not pointed out an specific features of the current claims which are deemed to be non-obvious over the previously patented claims. Hence, the double patenting rejections stand.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT L NASSER whose telephone number is (571)272-4731. The examiner can normally be reached M-F 8-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Kosowski can be reached at (571) 272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT L NASSER/ Primary Examiner, Art Unit 3992
CONFEREES:
/DENNIS G BONSHOCK/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992