DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant elected group 2 without traverse.
Response to Amendment
Receipt is acknowledged of applicant’s amendment filed on July 28, 2025. Claims 22-34 have been added. Claims 1-14 have been canceled without prejudice. Claims 15, 17 have been amended. Claims 15-34 are pending and an action on the merits is as follows.
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because Fig 6 has seven steps and “4” is labeled twice. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: the description of Fig 6 is par 108-116 include duplicate instances of “4” (par 108 ln 12, par 111 line 15, par 116) referring to 2 distinct steps.
Appropriate correction is required.
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 17, 31 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for displaying on the device of the merchant a machine-readable code representing the token, does not reasonably provide enablement for the displayed code representing the decoded token. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims. The specification does not disclose how the device of the merchant will decode the token then display a machine-readable representation of the decoded token.
Claims 18, 32 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The specification does not describe the device of the merchant retrieving the encoded token from the server of the token issuing entity regarding Fig 6.
Claims 20-28 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 and being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: it is unclear whether the “machine” or the “device of the merchant” is decoding the encoded token.
Allowable Subject Matter
Claims 15, 16, 19, 29, 30, 33, and 34 are allowed.
The following is an examiner’s statement of reasons for allowance: none of the prior art of record taken alone or in combination disclose, teach, or fairly suggest at least a device of a merchant determining an electronic address of a server of the token issuing entity by decoding the encoded token, and facilitating the prospective transaction based on the electronic address.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Christle I. Marshall whose telephone number is (571) 270-3086. The examiner can normally be reached on Monday – Friday 7:30AM - 4:00PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Paik can be reached on (571) 272-2404. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Christle I Marshall/
Primary Examiner, Art Unit 2876