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's election with traverse of claims 7-12 in the reply filed on 9/1/25 is acknowledged. The traversal is on the ground(s) that the elected claims represent a cohesive method that integrates all the essential components of the mobile payment system described in the specification, and restriction between these related aspects would be improper. This is not found persuasive because the subcombinations, although useable together, do not overlap in scope and are not obvious variants.
The requirement is still deemed proper and is therefore made FINAL.
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 7-12, 19-32 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 9,195,982 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both the issued patent and the present application claim, inter alia, providing digital authentication information, via a wireless communication network that includes at least one of a wireless telephone network and a WiFi network, to a point of sale system associated with a venue that offers at least a good for sale by the venue and a service for sale by the venue; encrypting payment information associated with a user of the wireless mobile communications device; providing encrypted payment information associated with the user of the wireless mobile communications device, via the wireless communication network, to the point of sale system; providing, to the point of sale system via the wireless communication network, an alphanumeric code corresponding to a transaction between the venue, that utilizes the point of sale system and offers the at least the good for sale by the venue and the service for sale by the venue, and the user of the wireless mobile communications device, wherein the transaction includes a compensation amount for the at least the good for sale by the venue and the service for sale by the venue; and providing a payment request for the transaction associated with the alphanumeric code, via the wireless communication network, to the point of sale system.
Claim Rejections - 35 USC § 102
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 –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claims 7-12, 19-32 are rejected under 35 U.S.C. 102(e) as being anticipated by Mullen et al., U.S. 2009/0159705.
7. (Currently Amended) A method for interfacing a customer's mobile communications device with a merchant's point of sale system, (see Mullen, abstract, ¶ 8-9)(A payment card or other device (e.g., mobile telephone) … A user can utilize buttons located on the card to perform activities that would otherwise be performed at an ATM, payment card reader, or by a waitress)(emphasis added), comprising the steps of:
the customer initiating an "open tab" request using a client software application running on the customer's mobile communications device, (see Mullen, fig. 12 #1201, ¶ 110)(Graphical user interface 1201 may be provided on a display of a point-of-sale devices such that an operator of the point-of-sale device may be provided with the decisions of the user of a card or other device (e.g., mobile telephone), such as opening a bar tab with a waitress. The operator may acknowledge that the operator understands the user's selection by utilizing manual input interfaces 1211 and 1212),
the client software application submitting a query to a central server, (see Mullen, ¶ 21)( A remote server may receive/recognize/process and/or determine payment information. This information may include data fields (e.g., discretionary data fields) submitted by a user, which is considered to be a query),
the client software application establishing an encrypted communications session with a merchant side software application running on a merchant's point of sale system, (see Mullen, ¶ 55)(Information may be changed via, for example, encryption. Software may be provided at, for example, the payment verification server that verifies the dynamic information for each period of time such that a payment can be validated and processed for a particular user.),
the customer ordering items to be placed on a customer's bill on the merchant's point of sale system, (see Mullen, ¶ 14)(transaction information (e.g., list of past transactions, stores where transactions occurred, amounts of transactions) and account information (e.g., balance information, bill information, amount due information) may be communicated to the card and displayed on one or more displays.), and
the customer paying the customer's bill with a payment request initiated using the client software application, (see Mullen, abstract)( A payment card or other device (e.g., mobile telephone) is provided. A user can utilize buttons located on the card or other device to perform activities that would otherwise be performed at an ATM, payment card reader, or by a waitress. A user can provide instructions on a card to accelerate a transaction. The information a user enters can be communicated to a point-of-sale device).
8. (Currently Amended) The method of Claim 7, in which credit or debit card information comprises a primary account number, cardholder name and card expiration date is stored on the customer's mobile communications device, (see Mullen, ¶ 102)( The processor may then retrieve payment information associated with stored payment information for user interface 813. Accordingly, for example, the processor may retrieve debit card information (e.g., a debit card account number and associated discretionary data).
9. (Original) The method of Claim 7, in which the query to the central server comprises a request for locations of merchants operating the merchant side software application on their merchant's point of sale system, (see Mullen, fig. 15 #1510, ¶ 20)(software located on a cash-register (e.g., a restaurant's cash register) may receive the information from the POS reader…software may be added to the POS readers and/or cash registers associated with that particular restaurant chain).
10. (Original) The method of Claim 7, in which the customer's mobile communications device communicates with the merchant's point of sale system through the 3G mobile communications protocol, through the 4G mobile communications protocol, through wi-fi, through wl-max, through Bluetooth, and through near-field communications (NFC) protocols, (see Mullen, ¶ 7, 16, 89)(Such a device may be, for example, a security token, a wireless communications device utilizing Wi-Fi, RFID, IC Chip, etc.).
11. (Currently Amended) The method of Claim 7, in which the client software application stores credit or debit card information in an encrypted format and transmits the stored credit or debit card information to the merchant side software application during the encrypted communications session, (see Mullen, ¶ 55).
12. (Currently Amended) The method of Claim 11, in which the merchant side software application pre-authorizes or verifies the customer's credit or debit card information, (see Mullen, ¶ 19)(The remote server may also pre-authorize the transaction for this full-amount such that a user can, for example, easily change the tip if desired).
13. - 18. (Canceled)
19. (New) The method of Claim 7, in which the customer can add, remove, or order items directly through the client software application, (see Mullen, ¶ 14)(a user may utilize buttons to select information to be displayed on displays associated with user interfaces. A code may associate a name of a store with a button and/or a dollar amount… This received information may be utilized to update information on the card (e.g., the balance of a gift card, credit account, and/or debit account).
20. (New) The method of Claim 7, in which the client software application accesses a wallet component that stores multiple encrypted payment cards on the customer's mobile communication device, (see Mullen, ¶ 16)(Such communication devices may, for example, be utilized to load gift cards, or other information (e.g., transactional or account information) from a laptop to a card or other device).
21. (New) The method of Claim 7, in which the client software application displays nearby enrolled merchants using device location services, (see Mullen, fig. 15 #1510, ¶ 20)(software located on a cash-register (e.g., a restaurant's cash register) may receive the information from the POS reader…software may be added to the POS readers and/or cash registers associated with that particular restaurant chain).
22. (New) The method of Claim 7, in which the encrypted communications session uses end-to-end encryption with ephemeral keys negotiated per-transaction directly between the customer's mobile communications device and the merchant's point of sale system, (see Mullen, ¶ 8)(Dynamic information may be provided by a processor located on the card, or other device, and communicated through a magnetic emulator. Such dynamic information may, for example, change based on time. For example, the dynamic information may be periodically encrypted differently).
23. (New) The method of Claim 22, in which no intermediary holds the encryption keys, (see Mullen, ¶ 8).
24. (New) The method of Claim 7, in which the client software application includes a "Pay" command button for initiating payment, (see Mullen fig. 11, # 1113, fig. 12, #1201)(The Customer has used “On Card Quick Purchase” feature).
25. (New) The method of Claim 7, in which the customer can review purchased items through the client software application, (see Mullen, ¶ 105)(Display 650 may, for example, display an updated selection status).
26. (New) The method of Claim 7, in which the customer can add gratuity through the client software application, (see Mullen, fig. 6 #681)(10% tip).
27. (New) The method of Claim 7, in which the merchant side software application interfaces with a native software application running on the merchant's point of sale system, (see Mullen, ¶ 20)(software may be added to the POS readers and/or cash registers associated with that particular restaurant chain).
28. (New) The method of Claim 7, in which the client software application obtains merchant location information from a central server to display available merchants to the customer, (see Mullen, fig. 15 #1510, ¶ 20).
29. (New) The method of Claim 7, in which the merchant side software application creates a bill on the merchant's point of sale system, (see Mullen, ¶ 81)(allow merchants to provide a one-click shopping, periodic billing, or any other type of feature).
30. (New) The method of Claim 7, in which the client software application provides real-time updates of the customer's bill as items are added by the merchant's employee, (see Mullen, ¶ 105)(Display 650 may, for example, display an updated selection status).
31. (New) The method of Claim 7, in which the payment request includes a session identifier and transaction identifier generated during the encrypted communications session, (see Mullen, ¶ 14)(A code may associate a name of a store with a button and/or a dollar amount).
32. (New) The method of Claim 7, further comprising: the merchant side software application generating an alphanumeric string and delivering the string to the client software application and to the merchant's point of sale system, the customer presenting the alphanumeric string on customer's mobile communications device to a merchant's employee, and the merchant's employee verifying that the alphanumeric string on the customer's mobile communications device matches the alphanumeric string on the merchant's point of sale system, (see Mullen, ¶ 9)(Dynamic information may include, for example, a dynamic number that is used as, or part of, a number for a credit card number, debit card number, payment card number, and/or payment verification code. Dynamic information may also include, for example, a student identification number or medical identification number. Dynamic information may also, for example, include alphanumeric information such that a dynamic account name is provided).
Response to Arguments
Applicant's arguments filed 12/17/25 have been fully considered but they are not persuasive. Applicant argues that: Mullen . Mullen discloses using a mobile device to order items in lieu of using a waitress, such as opening a bar tab and ordering items to be paid for by determining payment information, validating payment via a payment request initiated by software on a mobile device, and communicated to a POS device.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., "the customer may use the client software application to interface with the POS system to view this bill while the customer is enjoying himself in the merchant establishment" and where "the employee then matches the purchase code on the client device with the same purchase code on the POS system and enters the items ordered by the customer into the POS system.") are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL S GLASS whose telephone number is (571)272-7285. The examiner can normally be reached on M-F, 9-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FLORIAN ZEENDER can be reached on 571-272-6790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUSSELL S GLASS/
Primary Examiner, Art Unit 3687