DETAILED ACTION
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 .
Response to Arguments
Applicant’s arguments, see pages 7-8, filed June 24, 2025, with respect to the rejection(s) of claim(s) 1-20 under 35 USC 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of US patent 9,652,769 granted to Golin.
Claim Rejections - 35 USC § 112
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 1, 8 and 15 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.
Claims 1, 8 and 15 recite the limitation "the message" in line 5. There is insufficient antecedent basis for this limitation in the claim. As presently constructed, it is unclear from the claim whether the message is part of the token, associated with the token, or is separate from the token.
The clause, “requesting … the value”, creates a grammatical attachment ambiguity in that the clause prevents a clear reading of the descriptions of the token and the message. In other words, one of ordinary skill in the art would understand the step of a computing system making a request for a key based on the request information. However, it is unclear as to whether the computing system makes a request for the generation of a token and a message or whether the token and message are elements that were previously generated prior to the request. This ambiguity creates an uncertainty in the metes and bounds of the claim.
Finally, the step of “detokenizing … the token using the key” creates another ambiguous situation. It is not clear as to whether the derivation key or the retrieved key is used on the token to retrieve the value within the token.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
or
(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 1-2, 8-9, and 15 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by US patent 9,652,769 granted to Golin.
Regarding claim 1, Golin meets the claimed limitations as follows:
“A method, comprising: receive, by a computing system, a token comprising key request information;” {see column 16, lines 54-55 (tokenization system 145 receives a token 500 . . .); and Figure 9, element 910}.
“retrieve, by the computing system, the key request information from the token;” {see column 16, lines 54-55 (tokenization system 145 . . . parses the token to separate the first token information 610 . . . Based on the first token information 610, in block 920 the tokenization system 145 reads . . . the token key identifier 612.); and Figure 9, elements 910, 920}.
“requesting, by the computing system, a key for the token based on the key request information {see column 16, lines 64-67 (the tokenization system reads . . . the key label 624 that identifies the first key 149 used to encrypt the encrypted payment information 614 (and that uniquely corresponds to the token 500)},
the token corresponding to output of a tokenization algorithm receiving as input a value and a derivation key {see column 11, lines 33-46 (“the encrypted payment information” is the output of a tokenization algorithm used by the encryption system},
the message comprising a key generation identifier associated with the key and a value identifier, the value identifier associated with the value;” {see column 16, lines 64-67 and Figure 9, element 930}.
retrieving, by the computing system, the key;” {see column 16, lines 64-67 and Figure 9, element 930}.
“and detokenizing, by the computing system, the token using the key to retrieve the value.” {see column 17, lines 2-13 (decrypts the encrypted payment information based on the first key 149); and Figure 9, element 950}.
Regarding claim 2, Golin meets the claimed limitations as follows:
“The method of claim 1, wherein the computing system retrieves the key via an encrypted transmission.” {see column 16, lines 64-67 and Figure 9, element 930}
Claim 8 is a system claim that is substantially equivalent to method claim 1. Golin further teaches a system comprising memory and processor(s) for implementing the method steps (see column 5, lines 33-58). Therefore claim 8 is rejected by a similar rationale.
Regarding claim 9, Golin meets the claimed limitations as follows:
“The system of claim 8, wherein the token is detokenized using the key via a tokenization schema that was used to tokenize the token.” {see column 14, lines 29-41 (the first key 149, which is uniquely associated with the received payment information and used in the encryption (and decryption) process of same); and column 17, lines 2-13 (decrypts the encrypted payment information based on the first key 149)}.
Claims 15 is a non-transitory computer readable medium claim that is substantially equivalent to method claim 1. Golin further teaches a non-transitory computer readable medium for implementing the method steps (see column 5, lines 19-32). Therefore claim 15 is rejected by a similar rationale.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,870,897. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are directed towards subject matter related to the earlier patented claims.
Conclusion
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/MATTHEW SMITHERS/
Primary Examiner
Art Unit 2437