DETAILED ACTION
Status of Claims
This action is in reply to the application filed on February 8, 2024.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-20 are currently pending and have been examined.
Double Patenting
This 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 obviousness-type 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); and 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 a non-statutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this 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 AJA. 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 1-20 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent No.11928688. Although the claims at issue are not identical, they are not patentably distinct from each other because all the subject matter of the pending claims is disclosed by corresponding patented claims. The term “graphic indicium” was substituted by “token” in the instant application, however, in at least paragraph 0075 of the instant application specification, Applicant discloses a token as a graphic indicium.
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 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without “significantly more.”
Regarding Claims 1, 9 and 17, the claims are directed to transaction authorization which is a mental process (observation/evaluation) and a method of organizing a human activity (commercial interaction). The limitations on obtaining a request, generating a token sending a token, identifying information and authorizing a transaction based on a transaction satisfying a condition could be all performed in the human mind and/or with the help of paper and pencil. Other than reciting processors, a client device and a server, nothing in the claim precludes the steps for being performed in the human mind and/or the help of paper and pencil. All the steps of obtaining, generating, sending, identifying and authorizing recite functions directed to commercial interactions. This judicial exception is not integrated into a practical application. The computers are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using generic computer components. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Generic computer components performing generic computer functions alone, do not amount to significantly more that an abstract idea. Simply implementing the abstract idea on a generic computer environment is not a practical application of the abstract idea and does not take the claim out of the mental process and method of organizing a human activity grouping. The claims are directed to an abstract idea.
The claims do not include additional elements that even in combination are sufficient to amount to significantly more than the judicial exception. As discussed above, with respect to integration of the abstract idea into a practical application, the additional element of using computers to perform the obtaining, generating, sending, identifying and authorizing steps amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. There are no improvements to technology or any new technology involved. The claims are not patent eligible.
Regarding dependent claims 2-8, 10-16 and 18-20, these claims are directed to limitations which serve to limit the components, the processing steps and the information used. These claims neither introduce a new abstract idea nor additional limitations which are significantly more than an abstract idea. They provide descriptive details that offer helpful context, but have no impact on statutory subject matter eligibility.
Therefore the limitations on the invention, when viewed individually and in ordered combination are directed to in-eligible subject matter.
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 –
(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.
Claim(s) 1-5, 7-13 and 15-20 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Hart (US 2008/0243702 A1).
Claim 1
Hart discloses the following limitations:
A system comprising: one or more processors and memory storing instructions that, when executed by the one or more processors, cause operations comprising:
obtaining, from a client device, a request associated with a user account, the request including a restriction associated with the user account; (see at least figure 1, paragraph 0009-information may be received identifying a value limit, 0047-processing is triggered upon receiving a signal to generate a new token and 0099-parents create tokens for rent and for specific books and other needs of the students).
generating, based on the request and the restriction included in the request, a token that encodes the restriction included in the request; (see at least paragraphs 0034-0035-restrictions such as expiration date, maximum value and specific vendor may be encoded; 0053-a digital or physical token is generated; the user of the token may be the user that caused the token to be generated or some other user (e.g. a parent may generate a token to be used by his son or daughter and).
and sending, to the client device, the token that encodes the restriction to facilitate a transaction using the token. (see at least paragraphs 0034-0035-restrictions such as expiration date, maximum value and specific vendor may be encoded; 0053-a digital or physical token is generated; the user of the token may be the user that caused the token to be generated or some other user (e.g. a parent may generate a token to be used by his son or daughter).
Claim 2
Furthermore, Hart discloses the following limitations:
the operations further comprising: obtaining information associated with the token and a request to authorize the transaction, (see at least paragraphs 0006-0007).
the information including the restriction; identifying the restriction included in the information associated with the token; (see at least paragraphs 0034-0035).
determining whether the transaction satisfies the restriction; and authorizing the transaction based on a determination that the transaction satisfies the restriction (see at least paragraph 0012).
Claim 3
Furthermore, Hart discloses the following limitations:
wherein the information associated with the token is obtained in response to a scan of the token loaded on the client device. (see at least paragraph 0100).
Claim 4
Furthermore, Hart discloses the following limitations:
the operations further comprising: obtaining identification information associated with the token; (see at least paragraph 0012).
determining whether the obtained identification information corresponds to stored identification information associated with the token; (see at least paragraph 0043).
and authorizing the transaction based on a determination that the obtained identification information corresponds to the stored identification information associated with the token. (see at least paragraphs 0057-0059).
Claim 5
Furthermore, Hart discloses the following limitations:
wherein obtaining the request comprises obtaining, from the client device, a configuration request that includes configuration information related to applying the restriction to the user account, and (see at least paragraph 0035).
wherein the operations further comprise configuring the user account with the restriction based on the configuration information included in the configuration request. (see at least paragraphs 0035-0037).
Claim 7
Furthermore, Hart discloses the following limitations:
wherein the restriction includes a time period associated with the token, the operations further comprising: (see at least paragraph 0030, 0034 and 0050).
obtaining information associated with the token and an authorization request to authorize the transaction; (see at least paragraphs 0012 and 0026).
identifying the time period included in the information associated with the token; (see at least paragraphs 0012 and 0026).
determining whether a time of the transaction satisfies the time period; and (see at least figure 1 element 104).
authorizing the transaction based on a determination that the time of the transaction satisfies the time period. (see at least paragraphs 0012 and 0026).
Claim 8
Furthermore, Hart discloses the following limitations:
wherein the restriction includes an authorized region associated with the token, the operations further comprising:
obtaining information associated with the token and an authorization request to authorize the transaction; (see at least paragraph 0012).
identifying the authorized region included in the information associated with the token;(see at least paragraph 0035).
determining whether a location of the transaction satisfies the authorized region; and (see at least paragraph 0035 and figure 1, element 108).
authorizing the transaction based on a determination that the location of the transaction satisfies the authorized region. (see at least paragraph 0012 and fig 1 element 110).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 6 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hart (US 2008/0243702 A1).
Claim 6
Hart in at least paragraphs 0035-0037 discloses plurality of restrictions that may be imposed upon the use of a token such as restricting a token to a particular vendor, a particular item, an upper limit, etc. Hart does not explicitly disclose the following limitations:
the operations further comprising: obtaining an update request that includes another restriction associated with the user account;
generating a new token based on the update request and the other restriction included in the update request, the new token being encoded with the other restriction; and
sending, to the client device, the new token to facilitate another transaction using the new token.
However, since Hart discloses that a plurality of restrictions can be applied when generating a token, the limitations on generating a new token based on an updated request comprising another restriction included on the updated request is not explicitly disclosed but it is made obvious in view of the teachings. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to apply these lacking limitations to Hart in order to improve system’s efficiency and customer’s satisfaction. A person of ordinary skill in the art would have conceived the idea of creating such configuration. Moreover, the claimed subject matter would have been no more than a predictable combination of known techniques according to their respective purposes within routine skill and creativity.
As per claims 9-20, claims 9-20, recite substantially similar limitations to claims 1-8 and are therefore rejected using the same art and rationale set forth above.
CONCLUSION
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/DENISSE Y ORTIZ ROMAN/Examiner, Art Unit 3627
/FAHD A OBEID/Supervisory Patent Examiner, Art Unit 3627