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 .
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.
Claims 31 and 37 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 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.
As per Claim 31 (and similarly claim 37):
The original Specification (i.e. the original Specification of Parent Application 16/515,869, hereafter original Specification) does not have written description for authenticat[ing] the user based on the command (the original Specification appears to describe “authenticating the user via a voice assistant; processing the command based on authenticating the user via the voice assistant” [paragraph 72 of the original Specification of Parent Application 16/515,869], but this, at best, describes where a command is processed based on authenticating the user, not where the authenticating of the user is based on the command)
Parent Patent 2 (US 11,455,991) includes the same limitation (in claim 3 of Parent Patent 2) but this is not sufficient to provide written description support because Claim 3 of Parent Patent 2 contains the same new matter relative to the original Specification (i.e. the original Specification of Parent Application 16/515,869)
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.
Claim 31, 32, 37, and 40, 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.
As per Claim 31 (and similarly claim 37):
“the user” in line 3 of claim 31 lacks antecedent basis (claim 28 recites “user information” but never recites “a user”).
“the user” in the last line of claim 31 lacks antecedent basis (as a consequence of “the user” in line 3 of claim 31 lacking antecedent basis).
As per Claim 32:
It is not clear if “information identifying a format for an interface provided by the transaction system” and “information indicating one or more authentication procedures for accessing the transaction system” are:
1. included in the obtained virtual card swap procedure template (along with the user information)
Or
2. are separate entities from the virtual card swap procedure template and that are also obtained (along with the virtual card swap procedure template, which is only required to include the user information).
As per Claim 40:
“the user” in line 5 of claim 40 lacks antecedent basis (claim 28 recites “user information” but never recites “a user”).
“the user” in the last line of claim 40 lacks antecedent basis (as a consequence of “the user” in line 5 of claim 40 lacking antecedent basis).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
As per Claim(s) 21 (and similarly claim[s] 28 and 35, and consequently claim[s] 22-27, 29-34, and 36-40 which depend on claim[s] 21, 28, and 35), the prior art of record does not teach or suggest the combination of all limitations in claim(s) 21, including (i.e. in combination with the remaining limitations in claim[s] 21) A method, comprising: obtaining, by a device and based on a command, user information and virtual card information associated with a transaction system; accessing, by the device and using the user information, the transaction system; and causing, by the device, the virtual card information to be stored in the transaction system. (including where user information which is obtained based on a command is used to access a transaction system, and where virtual card information obtained based on the same command is caused to be stored in the transaction system accessed using the user information which was obtained based on the command).
2017/0180286 teaches “receiving a card generating request message sent by the mobile terminal, wherein the card generating request message carries the user information and the card information of the mobile terminal” (paragraph 12) and “That is, the acquisition of the user information and the card information of the mobile terminal may be from the mobile terminal or from the service provider. For example, a user may be informed, through a public account of a restaurant, that it is capable of getting a membership card of the restaurant. And if the user wants to acquire the membership card of the restaurant, the user may submit, through a mobile terminal, a card generating request message carrying user information and card information of the mobile terminal to a public account server. In another example, if a shopping mall intends to pre-release concessionary cards, the shopping mall may acquire, through a public account thereof on Laiwang, information of the users who follow the shopping mall, and then submit a card generating request message carrying the user information and the card information of the mobile terminal to the public account server” (paragraph 90) and “After the card generating request message of the mobile phone is received by the public account server, the public account server parses the card generating request message by using a message engine, so as to obtain the user information and the card information of the mobile phone. A card data engine of the public account server generates the card data for the mobile terminal by using a preset card data module based on the user information and the card information of the mobile phone” (paragraph 128). Paragraph 48 describes “Further, the user information comprises at least one of a user name, a user mobile terminal number, and a level of the user in the service provider of the card, and the card information comprises at least one of the service provider of the card and a type of the card”. The card information in this reference appears to be card information of a mobile terminal, not a card information associated with a transaction system in which the card information is to be stored. Even assuming the mobile terminal can be interpreted as a “transaction system”, this reference does not appear to describe where the mobile terminal (or any other device) is accessed using the user information.
2018/0285860 “once the consumer logs-in to his/her account… presented with an application form for the virtual card… may have been partially auto-filled to include… name… address… other contact information… may be automatically retrieved from the consumer’s account… additional fields… unique identification number, monthly salary and/or occupation… Upon receipt of the completed application form… generates a Primary Account Number… CVC2… Expiry date associated with the virtual card… If the user has an online account with the merchant via which the transaction is being conducted… details of the virtual card may be stored at the merchant server in association with the consumer’s online account… virtual card may be a merchant-specific virtual card” (paragraph 72). This reference teaches where details of a virtual card (generated new card, not virtual replacement for a credit card) may be stored at a merchant server in association with a consumer’s online account, and where the virtual card is merchant-specific.
2014/0162598 “FIG. 23 represents a flow diagram of the sequence of steps for using the registered CCIRAF/AITD or EucliStar eGeeenie as a substitute for the use of a physical credit card or debit card for point-of-sale (POS) payments with a corresponding LCD-displayed image of a corresponding virtual card and an electronically readable bar code identification that represents the corresponding displayed virtual credit /debit card” (paragraph 388). This reference teaches where a virtual card is used as a replacement/substitute for a credit card (not just generated from a credit card)
Double Patenting
For clarity of the record, NO Double Patenting rejections are required between the claims of this application and the claims of Parent Patent 2 (US 11,455,991) because the claims of Parent Patent 2 do not teach or suggest where user information is obtained based on a command.
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 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 32, 33, 35, 36, 38, 39, and 40, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 5, 9, 10, 11, 13, 15, and 20, of U.S. Patent No. 11,769,507, hereafter Parent Patent 1. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of this application are rendered obvious by the claims of Parent Patent 1.
As per Claim 21:
Claim 3 of Parent Patent 1 (interpreted as incorporating the limitations of Claim 1 of Parent Patent 1) suggests A method, comprising: (line 1 of claim 1 of Parent Patent 1)
obtaining, by a device and based on a command, user information and virtual card information associated with a transaction system; (lines 2-7 and last 3 lines of claim 1 of Parent Patent 1 and Claim 3 of Parent Patent 1; in order to perform the swap, the virtual card information is suggested to be “obtained” [such that it can be used to replace the credit card information in the merchant transaction system], and the swap is suggested to be performed in response to the command [since the indication to perform the swap is received based on the command], such that the virtual card information is suggested to be “obtain[ed]… based on a command”, and the swap procedure is for/”associated-with” a merchant “transaction system” and since the swap stores the virtual card information into the merchant transaction system, the virtual card information can be interpreted as “associated with a transaction system”; and in claim 3, the command leads to obtaining a template which includes the user information which suggests where “user information” is also “obtain[ed]… based on [the] command”)
accessing, by the device and using the user information, the transaction system; (“accessing…” limitation of claim 1 of Parent Patent 1)
and causing, by the device, the virtual card information to be stored in the transaction system (“swapping…” limitation of claim 1 of Parent Patent 1, where swapping the credit card information with the virtual card information logically stores the virtual card information in the merchant transaction system [thereby replacing the credit card information])
As per Claim 22:
Claim 3 of Parent Patent 1 (interpreted as incorporating the limitations of Claim 1 of Parent Patent 1) suggests wherein the command is associated with a virtual card swap procedure (lines 2-4 of Claim 1 of Parent Patent 1; a command that leads to an indication to perform a virtual card swap procedure is suggested to be associated with the virtual card swap procedure).
As per Claim 23:
Claim 3 of Parent Patent 1 (interpreted as incorporating the limitations of Claim 1 of Parent Patent 1) suggests wherein the transaction system is associated with a merchant (lines 3, 10, and 13 of Claim 1 of Parent Patent 1 recites “merchant transaction system”).
As per Claim 24:
Claim 3 of Parent Patent 1 (interpreted as incorporating the limitations of Claim 1 of Parent Patent 1) suggests wherein obtaining the user information and the virtual card information comprises: obtaining a virtual card swap procedure template that includes the user information (Claim 3 of Parent Patent 1 teaches obtaining the template including the user information which logically obtains the user information as part of the obtained template).
As per Claim 25:
Claim 3 of Parent Patent 1 does not, but Claim 5 of Parent Patent 1 suggests wherein obtaining the user information and the virtual card information comprises: obtaining the user information from a stored user profile that has been generated based on user input or a virtual card swap procedure (Claim 5 of Parent Patent 1).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of effective filing to perform a simple substitution of one type of user information with another because Claim 3 of Parent Patent 1 teaches the claimed invention except for the substitution of user information which is not necessarily obtained from a stored user profile that has been generated based on user input or a virtual card swap procedure with user information which is. Claim 5 of Parent Patent 1 teaches that user information which is obtained from a stored user profile that has been generated based on user input or a virtual card swap procedure was known in the claims. One of ordinary skill in the art could have substituted one type of user information with another to obtain the predictable results of Claim 3 of Parent Patent 1, where the user information is obtained from a stored user profile that has been generated based on user input or a virtual card swap procedure (as per Claim 5 of Parent Patent 1).
As per Claim 26:
Claim 3 of Parent Patent 1 does not, but Claim 4 of Parent Patent 1 suggests wherein the user information includes one or more of: a user name, a user password, a knowledge-based question, or a two-factor authentication based response (Claim 4 of Parent Patent 1).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of effective filing to perform a simple substitution of one type of user information with another because Claim 3 of Parent Patent 1 teaches the claimed invention except for the substitution of user information which does not necessarily include one or more of: a user name, a user password, a knowledge-based question, or a two-factor authentication based response with user information which does. Claim 4 of Parent Patent 1 teaches that user information which includes one or more of: a user name, a user password, a knowledge-based question, or a two-factor authentication based response was known in the claims. One of ordinary skill in the art could have substituted one type of user information with another to obtain the predictable results of Claim 3 of Parent Patent 1, where the user information which includes one or more of: a user name, a user password, a knowledge-based question, or a two-factor authentication based response (as per Claim 4 of Parent Patent 1).
As per Claim 27:
Claim 3 of Parent Patent 1 does not, but Claim 13 of Parent Patent 1 suggests wherein the virtual card information identifies a merchant-specific virtual card (Claim 13 of Parent Patent 1; Claim 1 of Parent Patent 1 teaches that the virtual card information relates to a virtual card [which suggests an embodiment where the virtual card information identifies the virtual card] and Claim 13 of Parent Patent 1 teaches where the virtual card is a merchant-specific virtual card).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of effective filing to perform a simple substitution of one type of virtual card information with another because Claim 3 of Parent Patent 1 teaches the claimed invention except for the substitution of virtual card information which does not necessarily identify a merchant-specific virtual card with virtual card information which does. Claim 13 of Parent Patent 1 teaches that virtual card information which identifies a merchant-specific virtual card was known in the claims. One of ordinary skill in the art could have substituted one type of virtual card information with another to obtain the predictable results of Claim 3 of Parent Patent 1, where the virtual card is a merchant-specific virtual card (as per Claim 13 of Parent Patent 1).
As per Claim 28:
Claim 10 of Parent Patent 1 (interpreted as incorporating the limitations of Claim 9 of Parent Patent 1) suggests A device, comprising: one or more memories; and one or more processors coupled to the one or more memories, configured to: (lines 1-4 of claim 9 of Parent Patent 1)
obtain, based on a command, user information and virtual card information associated with a transaction system; (lines 5-11 and last 3 lines of claim 9 of Parent Patent 1 and Claim 10 of Parent Patent 1; in order to perform the swap, the virtual card information is suggested to be “obtained” [such that it can be used to replace the credit card information in the merchant transaction system], and the swap is suggested to be performed in response to the command [since the indication to perform the swap is received based on the command], such that the virtual card information is suggested to be “obtain[ed]… based on a command”, and the swap procedure is for/”associated-with” a merchant “transaction system” and since the swap stores the virtual card information into the merchant transaction system, the virtual card information can be interpreted as “associated with a transaction system”; and in claim 3, the command leads to obtaining a template which includes the user information which suggests where “user information” is also “obtain[ed]… based on [the] command”)
access, using the user information, the transaction system; (“access…” limitation of claim 9 of Parent Patent 1)
and cause the virtual card information to be stored in the transaction system: (“swap…” limitation of claim 9 of Parent Patent 1, where swapping the credit card information with the virtual card information logically stores the virtual card information in the merchant transaction system [thereby replacing the credit card information])
As per Claim 29:
Claim 10 of Parent Patent 1 does not, but Claim 2 of Parent Patent 1 teaches wherein the command is at least one of: a voice command, a gesture command, or a configured symbolic command (Claim 2 of Parent Patent 1).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of effective filing to perform a simple substitution of one type of command with another because Claim 10 of Parent Patent 1 teaches the claimed invention except for the substitution of a command which is not necessarily at least one of: a voice command, a gesture command, or a configured symbolic command with a command which is. Claim 2 of Parent Patent 1 teaches that a command which is at least one of: a voice command, a gesture command, or a configured symbolic command was known in the claims. One of ordinary skill in the art could have substituted one type of command with another to obtain the predictable results of Claim 10 of Parent Patent 1, where the command which is at least one of: a voice command, a gesture command, or a configured symbolic command (as per Claim 2 of Parent Patent 1).
As per Claim 30:
Claim 10 of Parent Patent 1 (interpreted as incorporating the limitations of Claim 9 of Parent Patent 1) suggests wherein the transaction system is a merchant transaction system (lines 6-7, 12-13, and 16 of Claim 9 of Parent Patent 1 recites “merchant transaction system”).
As per Claim 32:
Claim 10 of Parent Patent 1 (interpreted as incorporating the limitations of Claim 9 of Parent Patent 1) suggests wherein the one or more processors, when obtaining the user information and the virtual card information, are configured to: obtain a virtual card swap procedure template that includes the user information, information identifying a format for an interface provided by the transaction system, and information indicating one or more authentication procedures for accessing the transaction system (Claim 10 of Parent Patent 1)
As per Claim 33:
Claim 10 of Parent Patent 1 does not, but Claim 11 of Parent Patent 1 teaches wherein the user information includes a user name and a user password (Claim 11 of Parent Patent 1).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of effective filing to perform a simple substitution of one type of user information with another because Claim 10 of Parent Patent 1 teaches the claimed invention except for the substitution of user information which does not necessarily include a user name and a user password with user information which does. Claim 11 of Parent Patent 1 teaches that user information which includes a user name and a user password was known in the claims. One of ordinary skill in the art could have substituted one type of user information with another to obtain the predictable results of Claim 10 of Parent Patent 1, wherein the user information includes a user name and a user password (as per Claim 11 of Parent Patent 1).
As per Claim 35:
Claim 15 of Parent Patent 1 suggests A non-transitory computer-readable medium storing instructions, the instructions comprising: one or more instructions that, when executed by one or more processors, cause the one or more processors to: (lines 1-4 of Claim 15 of Parent Patent 1)
obtain, based on a command,…virtual card information associated with a transaction system; (lines 5-11 and last 3 lines of claim 1 of Parent Patent 1; in order to perform the swap, the virtual card information is suggested to be “obtained” [such that it can be used to replace the credit card information in the merchant transaction system], and the swap is suggested to be performed in response to the command [since the indication to perform the swap is received based on the command], such that the virtual card information is suggested to be “obtain[ed]… based on a command”, and the swap procedure is for/”associated-with” a merchant “transaction system” and since the swap stores the virtual card information into the merchant transaction system, the virtual card information can be interpreted as “associated with a transaction system”; and in claim 3, the command leads to obtaining a template which includes the user information which suggests where “user information” is also “obtain[ed]… based on [the] command”)
access, using the user information, the transaction system; (“access…” limitation of Claim 15 of Parent Patent 1)
and cause the virtual card information to be stored in the transaction system (“swap…” limitation of Claim 15 of Parent Patent 1, where swapping the credit card information with the virtual card information logically stores the virtual card information in the merchant transaction system [thereby replacing the credit card information])
Claim 15 of Parent Patent 1 does not, but Claim 3 of Parent Patent 1 suggests obtain, based on a command, user information and virtual card information associated with a transaction system;.(Claim 3 of Parent Patent 1; in claim 3, the command leads to obtaining a template which includes the user information which suggests where “user information” is also “obtain[ed]… based on [the] command”)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of effective filing to combine claim elements according to known methods because the Claims of Parent Patent 1 included each element claimed, although not necessarily in a single claim, with the only difference between the claimed invention and the Claims of Parent Patent 1 being the lack of actual combination of the elements in a single claim (Claim 1 of Parent Patent 1 is a method equivalent of Claim 15 of Parent Patent 1 and Claim 3 of Parent Patent 1 teaches adding the limitations of Claim 3 of Parent Patent 1 to the method steps of Claim 1 of Parent Patent 1, which are the same steps performed by Claim 15 of Parent Patent 1). One of ordinary skill in the art could have combined the elements as claimed by known methods (by adding the steps of Claim 3 of Parent Patent 1 to the steps of Claim 15 of Parent Patent 1 in the same way that Claim 3 of Parent Patent 1 adds the steps of Claim 3 of Parent Patent 1 to the steps of Claim 1 of Parent Patent 1), and that in combination, each element merely performs the same function as it does separately. The combination is the predictable results of the combination of Claim 15 of Parent Patent 1 and Claim 3 of Parent Patent 1.
As per Claim 36:
Claim 15 of Parent Patent 1 does not, but Claim 11 of Parent Patent 1 teaches wherein the user information is a user name and a user password (Claim 11 of Parent Patent 1).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of effective filing to perform a simple substitution of one type of user information with another because Claim 15 of Parent Patent 1 teaches the claimed invention except for the substitution of user information which does not necessarily include a user name and a user password with user information which does. Claim 11 of Parent Patent 1 teaches that user information which includes a user name and a user password was known in the claims. One of ordinary skill in the art could have substituted one type of user information with another to obtain the predictable results of Claim 15 of Parent Patent 1, wherein the user information includes a user name and a user password (as per Claim 11 of Parent Patent 1).
Claims 15 and 11 of Parent Patent 1 do not, but Claim 13 of Parent Patent 1 suggests wherein the virtual card information identifies a merchant-specific virtual card (Claim 13 of Parent Patent 1; Claim 15 of Parent Patent 1 teaches that the virtual card information relates to a virtual card [which suggests an embodiment where the virtual card information identifies the virtual card] and Claim 13 of Parent Patent 1 teaches where the virtual card is a merchant-specific virtual card).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of effective filing to perform a simple substitution of one type of virtual card information with another because Claims 15 and 11 of Parent Patent 1 teaches the claimed invention except for the substitution of virtual card information which does not necessarily identify a merchant-specific virtual card with virtual card information which does. Claim 13 of Parent Patent 1 teaches that virtual card information which identifies a merchant-specific virtual card was known in the claims. One of ordinary skill in the art could have substituted one type of virtual card information with another to obtain the predictable results of Claim 15 of Parent Patent 1, wherein the user information includes a user name and a user password (as per Claim 11 of Parent Patent 1), where the virtual card is a merchant-specific virtual card (as per Claim 13 of Parent Patent 1).
As per Claim 38:
Claim 15 of Parent Patent 1 suggests wherein the transaction system is a merchant transaction system (lines 6-7, 12-13, and 16 of Claim 15 of Parent Patent 1 recites “merchant transaction system”).
As per Claim 39:
Claim 15 of Parent Patent 1 does not, but Claim 10 of Parent Patent 1 (interpreted as incorporating the limitations of Claim 9 of Parent Patent 1) suggests wherein the one or more instructions, when executed by the one or more processors, further cause the one or more processors to: identify a template associated with a merchant, wherein the template includes information identifying user data associated with accessing the transaction system; and wherein the one or more instructions, that cause the one or more processors to access the transaction system, cause the one or more processors to: access the transaction system using the template (Claim 10 of Parent Patent 1 describes where a virtual card swap procedure template is obtained for the virtual card swap procedure and Claim 9 of Parent Patent 1 describes where “a virtual card swap procedure” is “for a merchant transaction system” [which collectively suggest where the virtual card swap procedure template is “identified” as something to be obtained, and is “associated with a merchant” since the template is used for the swap procedure that is for the transaction system that corresponds to a merchant; Claim 10 of Parent Patent 1 also describes where the template includes “the user information” [i.e. the user information used to access the merchant transaction system in Claim 9 of Parent Patent 1] which suggests “wherein the template includes information identifying user data associated with accessing the transaction system”, and also suggests “access[ing] the transaction system using the template” [since the transaction system is accessed using user information that is in the template])
Therefore, it would have been obvious to one of ordinary skill in the art at the time of effective filing to combine claim elements according to known methods because the Claims of Parent Patent 1 included each element claimed, although not necessarily in a single claim, with the only difference between the claimed invention and the Claims of Parent Patent 1 being the lack of actual combination of the elements in a single claim (Claim 9 of Parent Patent 1 is a device equivalent of Claim 15 of Parent Patent 1 and Claim 10 of Parent Patent 1 teaches adding the limitations of Claim 10 of Parent Patent 1 to the method steps of Claim 9 of Parent Patent 1, which are the same steps performed by Claim 15 of Parent Patent 1). One of ordinary skill in the art could have combined the elements as claimed by known methods (by adding the steps of Claim 10 of Parent Patent 1 to the steps of Claim 15 of Parent Patent 1 in the same way that Claim 10 of Parent Patent 1 adds the steps of Claim 10 of Parent Patent 1 to the steps of Claim 9 of Parent Patent 1), and that in combination, each element merely performs the same function as it does separately. The combination is the predictable results of the combination of Claim 15 of Parent Patent 1 and Claim 10 of Parent Patent 1.
As per Claim 40:
Claim 20 of Parent Patent 1 teaches its limitations.
Claims 21, 22, 23, 27, 28, 29, 30, 34, 35, 38, and 39, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7, 8, 10, 14, and 16, of U.S. Patent No. 10,497,372, hereafter Parent Patent 3. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of this application are rendered obvious by the claims of Parent Patent 3.
As per Claim 35 (and similarly claims 21 and 28):
Claim 14 of Parent Patent 3 suggests (along with its method and device equivalents) A non-transitory computer-readable medium storing instructions, the instructions comprising: one or more instructions that, when executed by one or more processors, cause the one or more processors to: (lines 1-5 of Claim 14 of Parent Patent 3)
obtain, based on a command, user information and virtual card information associated with a transaction system; (lines 6-14 and last 9 lines of Claim 14 of Parent Patent 3; where the command leads to identifying a merchant which leads to obtaining user information which leads to obtaining a virtual card related to virtual card information to be used to swap credit card information [such that both the user information and virtual card information can be interpreted as being obtained in order to perform the swap as a consequence of receiving the command], and since the virtual card information is used to replace credit card information in the merchant transaction system, the virtual card information is logically “associated with a transaction system”)
access, using the user information, the transaction system; (“accessing… the merchant transaction system using the user information” in Claim 14 of Parent Patent 3)
and cause the virtual card information to be stored in the transaction system (last 9 lines of Claim 14 of Parent Patent 3, where swapping the credit card information with the virtual card information in the transaction system logically causes the virtual card information to be stored in the transaction system instead of the credit card information, and confirming that a virtual card is stored in the transaction system suggests where the virtual card information is stored in the transaction system).
As per Claim 22:
Claim 14 of Parent Patent 3 suggests wherein the command is associated with a virtual card swap procedure (lines 6-8 of claim 14 of Parent Patent 3).
As per Claim 23:
Claim 14 of Parent Patent 3 suggests wherein the transaction system is associated with a merchant (the third and last 3 limitations in the body of Claim 14 of Parent Patent 3 recites “merchant transaction system”).
As per Claim 27:
Claim 16 of Parent Patent 3 suggests wherein the virtual card information identifies a merchant-specific virtual card (Claim 16 of Parent Patent 3; Claim 14 of Parent Patent 3 teaches that the virtual card information relates to a virtual card [which suggests an embodiment where the virtual card information identifies the virtual card] and Claim 16 of Parent Patent 3 teaches where the virtual card is a merchant-specific virtual card).
As per Claim 29:
Claim 14 of Parent Patent 3 does not, but Claim 8 of Parent Patent 3 teaches wherein the command is at least one of: a voice command, a gesture command, or a configured symbolic command (Claim 8 of Parent Patent 3).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of effective filing to perform a simple substitution of one type of command with another because Claim 14 of Parent Patent 3 teaches the claimed invention except for the substitution of a command which is not necessarily at least one of: a voice command, a gesture command, or a configured symbolic command with a command which is. Claim 8 of Parent Patent 3 teaches that a command which is at least one of: a voice command, a gesture command, or a configured symbolic command was known in the claims. One of ordinary skill in the art could have substituted one type of command with another to obtain the predictable results of Claim 14 of Parent Patent 3, where the command which is at least one of: a voice command, a gesture command, or a configured symbolic command (as per Claim 8 of Parent Patent 3).
As per Claim 30:
Claim 14 of Parent Patent 3 suggests wherein the transaction system is a merchant transaction system (the third and last 3 limitations in the body of Claim 14 of Parent Patent 3 recites “merchant transaction system”).
As per Claim 34:
Claim 14 of Parent Patent 3 suggests wherein the one or more processors are further configured to: provide a confirmation that the virtual card information is saved in the transaction system (last limitation of Claim 14 of Parent Patent 3)
As per Claim 38:
Claim 14 of Parent Patent 3 suggests wherein the transaction system is a merchant transaction system (the third and last 3 limitations in the body of Claim 14 of Parent Patent 3 recites “merchant transaction system”).
As per Claim 39:
Claim 14 of Parent Patent 3 does not, but Claim 10 of Parent Patent 3 suggests wherein the one or more instructions, when executed by the one or more processors, further cause the one or more processors to: identify a template associated with a merchant… and wherein the one or more instructions, that cause the one or more processors to access the transaction system, cause the one or more processors to: access the transaction system using the template (Claim 10 of Parent Patent 3 describes “determin[ing] a virtual card swap procedure template for the merchant” which can be interpreted as “identifying” the virtual card swap procedure template associated with the merchant, and also describes “access[ing] the merchant transaction system using the virtual card swap procedure template”)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of effective filing to combine claim elements according to known methods because the Claims of Parent Patent 3 included each element claimed, although not necessarily in a single claim, with the only difference between the claimed invention and the Claims of Parent Patent 3 being the lack of actual combination of the elements in a single claim (Claim 14 of Parent Patent 3 suggests the limitations of claim 35 of this application and claim 10 of Parent Patent 3 suggests identifying a template associated with a merchant and accessing the transaction system using the template). One of ordinary skill in the art could have combined the elements as claimed by known methods (by adding the steps of Claim 10 of Parent Patent 3 to the steps of Claim 14 of Parent Patent 3), and that in combination, each element merely performs the same function as it does separately. The combination is the predictable results of Claim 14 of Parent Patent 3, where the one or more processors are also caused to determine a virtual card swap procedure template for the merchant and access the merchant transaction system using the virtual card swap procedure template (as per Claim 10 of Parent Patent 3).
Claims 14 and 10 of Parent Patent 3 does not, but Claim 7 of Parent Patent 3 suggests wherein the one or more instructions, when executed by the one or more processors, further cause the one or more processors to: identify a template associated with a merchant, wherein the template includes information identifying user data associated with accessing the transaction system; and wherein the one or more instructions, that cause the one or more processors to access the transaction system, cause the one or more processors to: access the transaction system using the template (Claim 7 of Parent Patent 3 describes where “the virtual card swap procedure template” [the same phrase used to recite the template in Claim 10 of Parent Patent 3] is used to determine what user information is needed to access the merchant transaction system, which suggests where “the virtual card swap procedure template “includes information identifying user data associated with accessing the transaction system”)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of effective filing to perform a simple substitution of one type of virtual card swap procedure template with another because Claims 14 and 10 of Parent Patent 3 teach the claimed invention except for the substitution of a virtual card swap procedure template which does not necessarily include information identifying user data associated with accessing the transaction system with a virtual card swap procedure template which does. Claim 7 of Parent Patent 3 teaches that a virtual card swap procedure template which includes information identifying user data associated with accessing the transaction system was known in the claims. One of ordinary skill in the art could have substituted one type of a virtual card swap procedure template with another to obtain the predictable results of Claim 14 of Parent Patent 3, where the one or more processors are also caused to determine a virtual card swap procedure template for the merchant and access the merchant transaction system using the virtual card swap procedure template (as per Claim 10 of Parent Patent 3) where the virtual card swap procedure template can be used to determine what user information is needed to access the merchant transaction system (as per Claim 7 of Parent Patent 3).
Conclusion
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EY 1/7/2026
/ERIC YEN/ Primary Examiner, Art Unit 2658