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 .
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.
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Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-6, 11, and 17-18 of U.S. Patent No. 11132680.
Although the claims at issue are not identical, they are not patentably distinct from each other. For example, patented claim 11 recites: receiving, by the network-based system, from the second application a second signed verifier and the device token stored by a secure element of the computing device;
validating, by the network-based system, the second signed verifier and the device token received from the second application;
providing, by the network-based system, a second access token to the second application;
receiving, by the network-based system, from the second application a payment call with the second access token;
verifying, by the network-based system, the second access token; and
providing, by the network-based system, a payment confirmation in response to the payment call.
Patented dependent claim 11 differs since it further recites additional claim limitations including those of independent claim 10. However, it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. See In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
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 2-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 2-8 are directed to a system, claims 9-15 are directed to a method, and claims 16-21 are directed to a non-transitory machine-readable medium. Therefore, these claims fall within the four statutory categories of invention.
Claim 9 recites: A method comprising:
receiving, from an application on a computing device, a login request to an account without input of login credentials for the account in the application, wherein the login request includes data stored securely by the computing device that verifies the computing device associated with the account;
validating that the data received with the login request correspond to the account and the computing device;
providing an access token for the account to the application on the computing device, wherein the access token authorizes the login request and a payment call to be made via the application using the account;
receiving the payment call from the application, wherein the payment call comprises the access token and a request for a payment to be made to a merchant in the application using the account; and
processing the payment to the merchant in the application using the account without requiring the login credentials to be input in the application.
(Additional element(s) emphasized in bold)
The above claim describes a process for receiving, by a financial institution, an access request for an account of a user including data stored securely by the financial institution that verifies the user associated with the account; validating that the data received with the request corresponds to the account and the user; providing an identifier to the user, wherein the identifier authorizes the access request and a payment request to be made using the account; receiving the payment request, wherein the request comprises the identifier and a request for payment to be made to a merchant using the account; and processing the payment to the merchant using the account without requiring further access to the financial institution. Therefore, claim 9 is directed to the abstract idea of issuing a financial account credential (e.g. a prepaid credit/debit card) and processing a subsequent payment using the credential which is grouped within the “methods of organizing human activity” grouping under the “fundamental economic principles or practices” sub-grouping of abstract ideas in prong one of step 2A. Accordingly, the claims recite an abstract idea (See MPEP 2106.04).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See MPEP 2106.04), the additional elements of the claim such as application, computing device, login request, and access token merely uses a computer as a tool to perform an abstract idea. The use of an application, login request, and access token does no more than generally link the abstract idea to a particular field of use (e.g. digital transactions) due to reciting said elements at no more than a high level of generality (e.g. the use of an application and login request are merely digital substitutes for physical interactions a user may have at a POS/merchant and the use of an access token is merely a substitute for a financial account identifier such as a credit card number). Finally, the use of a processor/computer (computing device) as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B (See MPEP 2106.05), the additional elements of application, computing device, login request, and access token do not amount to significantly more than the abstract idea. As discussed above, taking the claim elements separately, the use of an application, login request, and access token does no more than generally link the abstract idea to a particular field of use (e.g. digital transactions) due to reciting said elements at no more than a high level of generality (e.g. the use of an application and login request are merely digital substitutes for physical interactions a user may have at a POS/merchant and the use of an access token is merely a substitute for a financial account identifier such as a credit card number). Finally, the use of a computing device does no more than use a processor/computer as a tool to implement and/or automate the abstract idea (i.e. “apply it”). Viewed as a whole, the combination of elements recited in the claims merely recites the concept of issuing and processing a digital credential for making payments. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 10-15 further describe characteristics of data (e.g. types of data securely stored, where/when the data is generated) and the additional elements of signature, device token, secure element, and SDK continue to do no more than generally link the abstract idea to a particular field of use and recite said elements at a high level of generality (e.g. the signature and device token are merely digital substitutes for physical credentials/identifying information and the secure element and SDK are generic hardware and software available to any off-the-shelf computing device). Accordingly, the dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
The same analysis pertaining to the abstract idea of issuing a financial account credential (e.g. a prepaid credit/debit card) and processing a subsequent payment using the credential holds true for claims 2-8 and 16-21 as well, with the additional elements of memory and processor merely using a processor/computer as a tool to implement the abstract idea. Therefore, claims 2-8 and 16-21 are also not patent eligible.
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.
Claim 7 is 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.
Claim 7 recites, “where the signature comprises at least a nonce and timestamp.” However, paragraph 0053 of the instant specification discloses that the verifier is/comprises a nonce and timestamp, “...the SDK simply requests that the secure element generate a signature for a verifier (i.e., a nonce and a timestamp).” While the verifier (comprising the nonce and timestamp) is signed as a whole in the specification, claim 2 makes the distinction that the signature, verifier, and device token are each distinct elements. Therefore, the nonce and timestamp should be comprised in the verifier as outlined in the specification. Accordingly, claim 7 recites new matter not disclosed in the specification.
Allowable Subject Matter
Claims 2-21 contain allowable subject matter over the prior art.
The following is a statement of reasons for the indication of allowable subject matter: The prior art does not disclose, in a reasonable number of references, neither singly nor in combination: validate the signature, the verifier, and the device token for the computing device using at least a public key associated with an account corresponding to the account usage request; provide an access token to the application based on validating the signature, the verifier, and the device token; and process the payment call using the account based on confirming the access token.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lee et al. (US 20160125402) generally discloses methods and device for payment via signing a received device token and stored user token with a public key and submitting the signed tokens along with payment request data to a payment server.
Russel et al. (PayPal APIs: Up and Running) generally discloses implementation of PayPal’s Express Checkout option on a merchant website using associated PayPal APIs.
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/T.R./Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697