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 .
Claims 1-20 are pending for examination. Claim(s) 1, 2, 5, 8, 12, 15, and 19 have been amended. This action is Final.
Response to Arguments
Applicant's arguments filed 11/25/2025 with respect to the 35 U.S.C. 101 rejection have been fully considered but they are not persuasive.
I. Claims 1-20 Comprise Statutory Subject Matter
Applicant Argument: The Examiner has the initial burden to "clearly and specifically" explain why a claim is directed toward a judicial exception. MPEP § 2106.07. For a claim to be directed toward a judicial exception, the claim must both (1) recite a judicial exception, and (2) fail to integrate the judicial exception into a practical application. MPEP § 2016.01 (II)(A). Applicant respectfully submits that neither of these prongs have been met for claims 1-20 as amended.
Examiner’s Response: The examiner respectfully disagrees for the reasons set forth below.
Claim(s) 1-20 Do Not Recite a Judicial Exception.
Applicant Argument: Applicant respectfully disagrees with this analysis. Applicant submits that claim 1 as amended does not recite "commercial interactions" or "legal interactions." Instead, claim 1 is directed toward, "A method" involving "a first request to open an instantaneous instrument. comprising at least a cryptocurrency account," "generating. an instrument number for the instantaneous instrument, based at least in part on a finding that the cryptocurrency account exceeds a preset minimum amount of funds," "receiving... a second request," and "generating. a statement that indicates at least in part that the second request corresponds to the instantaneous instrument." Applicant respectfully submits that claim 1 does not attempt to broadly claim a type of "commercial interaction[ ]" and instead is directed toward a specific, well-defined method posing little concern of overly-broad preemption. For at least this reason, Applicant respectfully requests that the rejection of claim 1 be withdrawn. For at least similar reasons, Applicant requests that the rejections of claims 8 and 15 be withdrawn as well. Additionally, for at least the reason that claims 2- 7, 9-14, and 16-20 depend from claims 1, 8, and 15 respectively, Applicant respectfully requests that the rejections of claims 2-7, 9-14, and 16-20 be withdrawn.
Examiner’s Response: The examiner respectfully disagrees. The examiner respectfully notes amended claim 1, still recites a “commercial interaction” or “legal interaction. The examiner respectfully notes that the limitations of “receiving a first request to open an instantaneous instrument, the first request comprising at least a ... account; generating an instrument number for the instantaneous instrument, based at least in part on a finding that the ... account exceeds a present minimum amount of funds; receiving a second request comprising the instrument number; and generating a statement that indicates at least in part that the second request corresponds to the instantaneous instrument” falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they recite “commercial interactions" in the form of sales activities or behaviors and/or business relations. The examiner notes as construed the claims, above, as argued focus on generation of an instantaneous instrument/account based on a request, use of the instantaneous instrument, and generation of a statement involving the instantaneous instrument which reasonably fall under the enumerated grouping of Certain Methods of Organizing Human Activity as the claims, above, as argued are noted to be a “commercial interaction” with focus on sales activities or behaviors and/or business relations. Therefore, the examiner finds this argument not persuasive.
Claims 1-20 Integrate The Judicial Exception That They Allegedly Recite Into a Practical Application
Applicant Argument: Applicant submits that clear improvements to a technical field are outlined in Applicant's specification:
A user (e.g., a consumer) can apply for a virtual card (e.g., a virtual credit card, virtual debit card, etc.) anywhere (e.g., in line at a checkout counter, at home, using a mobile device at any location, etc.). The virtual card can be used just as if it were a real card (e.g., physical credit card, debit card, etc.). The only difference is that the virtual card cannot be swiped since it does not really exist. Instead, the virtual card would have a card number, just as any physical card number would, which can be typed into a computer (or other credit card processor) and used in that manner. The virtual card can be displayed on a personal computing device using an app. A physical card can be mailed (or otherwise delivered) to the user so ultimately the user can use either the physical card or the virtual card to make transactions.
Applicant also notes that these improvements are also present in claim 1 as amended, which recites in part (emphasis added):
generating, by the computing device, an instrument number for the instantaneous instrument, based at least in part on a finding that the cryptocurrency account exceeds a preset minimum amount of funds;
transmitting, by the computing device, the instrument number to a client device;
receiving, by the computing device and from a terminal, a second request comprising the instrument number; [and]
approving the second request, based at least in part on a confirmation that sufficient funds exist in the cryptocurrency account.
Applicant respectfully submits that this represents an improvement in the field of "instantaneous instrument[s]."
For at least this reason, Applicant respectfully requests that the rejection of claim 1 be withdrawn. For at least similar reasons, Applicant requests that the rejections of claims 8 and 15 be withdrawn as well. Additionally, for at least the reason that claims 2- 7, 9-14, and 16-20 depend from claims 1, 8, and 15 respectively, Applicant respectfully requests that the rejections of claims 2-7, 9-14, and 16-20 be withdrawn.
Examiner’s Response: The examiner respectfully disagrees. The examiner respectfully notes that that the argued features note above of “generating an instrument number for the instantaneous instrument, based at least in part on a finding that the ... account exceeds a present minimum amount of funds; transmitting the instrument number to a client; receiving a second request comprising the instrument number; and generating a statement that indicates at least in part that the second request corresponds to the instantaneous instrument,” are argued to be the purported clear improvements to a technical field; however, such improvements are not within the technical field, but instead are improvements within the abstract idea itself. As noted above the as claims, above, as argued fall under the enumerated grouping of Certain Methods of Organizing Human Activity and are noted to be a “commercial interaction” with focus on sales activities or behaviors and/or business relations. Therefore, the examiner finds this argument not persuasive.
The examiner further notes that the use Claim 1, and similar claim(s) 8 and 15, recite i.e., a computing device/terminal, cryptocurrency, processor/memory/machine-readable instructions, and medium. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. These elements in the steps are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component and merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). Accordingly, these additional elements, even in combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. Therefore, the examiner finds this argument not persuasive.
Claims 1-20 Recite Significantly More than the Alleged Judicial Exception
Applicant Argument: Applicant respectfully notes that claim 1 as amended recites in part, "the first request comprising at least a cryptocurrency account," "based at least in part on a finding that the cryptocurrency account exceeds a preset minimum amount of funds," and "approving the second request, based at least in part on a confirmation that sufficient funds exist in the cryptocurrency account." Applicant submits that "a cryptocurrency account" and "finding that the cryptocurrency account exceeds a preset minimum amount of funds" are both unconventional for the surrounding industry. Therefore, Applicant submits that claim 1 as amended recites "significantly more than the exception."
For at least this reason, Applicant respectfully requests that the rejection of claim 1 be withdrawn. For at least similar reasons, Applicant requests that the rejections of claims 8 and 15 be withdrawn as well. Additionally, for at least the reason that claims 2- 7, 9-14, and 16-20 depend from claims 1, 8, and 15 respectively, Applicant respectfully requests that the rejections of claims 2-7, 9-14, and 16-20 be withdrawn.
Examiner’s Response: The examiner respectfully disagrees. The examiner respectfully notes that that the argued features note above of “based at least in part on a finding that the ... account exceeds a present minimum amount of funds [and] approving the second request, based at least in part on a confirmation that sufficient funds exist in the account” are features that art noted to be part of the abstract idea. As noted above the as the claims, above, as argued fall under the enumerated grouping of Certain Methods of Organizing Human Activity and are noted to be a “commercial interaction” with focus on sales activities or behaviors and/or business relations. Therefore, the examiner finds this argument not persuasive.
As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of for claim 1, and similar claim(s) 8 and 15, i.e., Claim 1, and similar claim(s) 8 and 15, recite i.e., use of cryptocurrency, which amounts to no more than mere instructions to apply the exception using a generic computer component and do not add anything that is not already present when they are considered individually or in combination. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Therefore, the examiner finds this argument not persuasive.
Applicant's arguments filed 11/25/2025 with respect to the 35 U.S.C. 103 rejection(s) have been considered but are moot in view of new grounds of rejection; however, the examiner notes the following: In response to Applicant’s argument “that none of Grossman, Reynold, nor Anonymous teach or are alleged to teach "approving the second request, based at least in part on a confirmation that sufficient funds exist in the cryptocurrency account,” the examiner respectively notes that Reynolds teaches approving, the second request, based at least in part on a confirmation that sufficient funds exist in the ... account ([0057] - In step 220, the interchange or the financial institution or its agent determines whether the transaction triggers one or more of the criteria for installment loan processing specified for the financial transaction card account of the account holder. In step 230, if the transaction does not trigger any of the criteria for installment loan processing, normal financial transaction card processing is performed--i.e., the financial institution or its agent accepts or rejects the transaction based on at least a determination of whether the transaction would exceed the credit line of the financial transaction card account. If one or more of the criteria for installment loan processing is triggered, in step 240 the interchange or the financial institution or its agent determines whether the transaction amount is greater than the available installment loan credit amount, which is equal to the installment loan credit limit minus the total installment loans balances due for the financial transaction card account. If the transaction amount exceeds the available installment loan credit amount, the transaction is rejected in step 250 and [0063]). The examiner notes newly cited refences Feng teaches concepts to cryptocurrency. Therefore, the examiner finds this argument not persuasive and/or moot.
For at least this reason, Applicant respectfully requests that the rejection of claim 1 be withdrawn. For at least similar reasons, Applicant requests that the rejections of claims 8 and 15 be withdrawn as well. Additionally, for at least the reason that claims 2- 7, 9-14, and 16-20 depend from claims 1, 8, and 15 respectively, Applicant respectfully requests that the rejections of claims 2-7, 9-14, and 16-20 be withdrawn.
Applicant’s request that the Double Patenting rejection be held in abeyance as the scope of the claims of the present application may drift during prosecution due to amendments that would render the double-patenting rejection moot. In light of the most recent amendment, the examiner will maintain the Double Patenting rejection.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
Step 1: claim(s) 1-20 are directed to a process, machine, and/or manufacture. Therefore, the claims are directed to statutory subject matter under Step 1 (Step 1: YES). See MPEP 2106.03.
Prong 1, Step 2A: claim 1, and similar claim(s) 8 and 15, taken as representative, recites at least the following limitations that recite an abstract idea:
A method comprising:
receiving
generating
transmitting
receiving
approving, the second request, based at least in part of a confirmation that sufficient funds exist in the
generating
The above limitations, under their broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in MPEP 2106.04(a)(2)(II), in that they recite "commercial interactions" or "legal interactions" include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. The broadest reasonable interpretation of these limitations for claim 1, and similar claim(s) 8 and 15 includes receiving a first request to open an instantaneous instrument, the first request comprising at least a ... account; generating an instrument number for the instantaneous instrument, based at least in part on a finding that the ... account exceeds a present minimum amount of funds; transmitting the instrument number to a client [device]; receiving a second request comprising the instrument number; approving, the second request, based at least in part of a confirmation that sufficient funds exist in the ...falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they recite “commercial interactions" in the form of sales activities or behaviors and/or business relations
Accordingly, these claims recite an abstract idea. (Prong 1, Step 2A: YES). The types of identified abstract ideas are considered together as a single abstract idea for analysis purposes.
Prong 2, Step 2A: Limitations that are not indicative of integration into a practical application include: (1) Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (MPEP 2106.05(f)), (2) Adding insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g)), (3) Generally linking the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)). Claim 1, and similar claim(s) 8 and 15, recite i.e., a computing device/terminal, use of cryptocurrency, processor/memory/machine-readable instructions, and medium. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration (see Applicant’s Specification, ⁋[0022], ⁋[0050], ⁋[0051], ⁋ [0055]). These elements in the steps are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component and merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). Accordingly, these additional elements, even in combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
As such, under Prong 2 of Step 2A, when considered both individually and as a whole, the limitations of claim 1, and similar claim(s) 8 and 15 are not indicative of integration into a practical application (Prong 2, Step 2A: NO). See MPEP 2106.04(d).
Since claim 1, and similar claim(s) 8 and 15 recites an abstract idea and fails to integrate the abstract idea into a practical application, claim 1, and similar claim(s) 8 and 15 is “directed to” an abstract idea under Step 2A (Step 2A: YES). See MPEP 2106.04(d).
Step 2B: The recitation of the additional elements is acknowledged, as identified above with respect to Prong 2 of Step 2A. These additional elements do not add significantly more to the abstract idea for the same reasons as addressed above with respect to Prong 2 of Step 2A.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of for claim 1, and similar claim(s) 8 and 15, i.e., Claim 1, and similar claim(s) 8 and 15, recite i.e., a computing device/terminal, use of cryptocurrency, processor/memory/machine-readable instructions, and medium; amounts to no more than mere instructions to apply the exception using a generic computer component and do not add anything that is not already present when they are considered individually or in combination. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Therefore, under Step 2B, there are no meaningful limitations in claim 1, and similar claim(s) 8 and 15 that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself (Step 2B: NO). See MPEP 2106.05.
Regarding Claims 2-7, 9-14, and 16-20, claims 2-7, 9-14, and 16-20 further defines the abstract idea that is present in their respective independent claims and hence are abstract for at least the reasons presented above w/ respect to “Certain Methods of Organizing Human Activity” as the claims recite further concepts of "commercial interactions" or "legal interactions" include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations i.e., enabling an instantaneous instrument. These dependent claim does not include any additional elements that integrate the abstract idea into a practical application; as such elements are recited at a high level of generality such that it amounts not more than mere instructions to apply the exception using a generic computer component (i.e., for example, Claim(s) 7 and 14, and 16 recite encryption). Even in combination, these additional elements do not integrate the abstract idea into a practical application and do no not amount to significantly more than the abstract idea itself. Thus, the aforementioned claims are not patent-eligible.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 1, 8, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grossman et al. (US 2014/0188704 A1) in view of Reynolds et al. (US 2010/0094735 A1) and Feng (US 2017/0046674 A1) and Anonymous, “Apple Pay May Interfere With Rewards” as found on www.FlyerTalk.com which was archived by web.archive.org on 10/24/2014.
Regarding Claim 1;
Grossman discloses a method comprising:
receiving, by a computing device, a first request to open an instantaneous instrument, ...the first request comprising at least [an] account; ([0005] - In some embodiments, the customer request for a new card number comprises a customer request for a new card number associated with a new account and [0027]-[0029] and [0031]);
generating, by the computing device, an instrument number for the instantaneous instrument ([0005] – In some embodiments, the customer request for a new card number comprises a customer request for a new card number associated with a new account and [0028]-[0029] - The next step, represented by block 220, is to electronically transmit a new card number to a mobile device associated with the customer. For example, the new card may be transmitted to the mobile wallet program running on the mobile device of the user. This new card number may be generated and transmitted in response to the user request for a new card number. The user's request for a new card number may be because the user has lost a previous card, that the user desires a new card number associated with a new account (as discussed further below) or otherwise. The next step, represented by block 230, is to initiate creation of a physical card corresponding to the electronically transmitted new card number. In some embodiments, the electronically transmitted new card number is the same as the physical card that is created and, in that regard, they are linked. However, in some embodiments, the electronically transmitted new card number is different than the physical card that is created);
transmitting, by the computing device, the instrument number to a client device ([0028]-[0029] - The next step, represented by block 220, is to electronically transmit a new card number to a mobile device associated with the customer. For example, the new card may be transmitted to the mobile wallet program running on the mobile device of the user. This new card number may be generated and transmitted in response to the user request for a new card number. The user's request for a new card number may be because the user has lost a previous card, that the user desires a new card number associated with a new account (as discussed further below) or otherwise. The next step, represented by block 230, is to initiate creation of a physical card corresponding to the electronically transmitted new card number. In some embodiments, the electronically transmitted new card number is the same as the physical card that is created and, in that regard, they are linked. However, in some embodiments, the electronically transmitted new card number is different than the physical card that is created);
Grossman fails to explicitly disclose: [...]
....at least a cryptocurrency account;
...based at least in part on a finding that the cryptocurrency account exceeds a preset minimum amount of funds;
receiving, by the computing device and from a terminal, a second request comprising the instrument number;
approving, the second request, based at least in part on a confirmation that sufficient funds exist in the cryptocurrency account;
generating, by the computing device, a statement that indicates at least in part that the second request corresponds to the instantaneous instrument.
However, in an analogous art, Reynolds et al. teaches [concepts of a] instantaneous instrument (Reynolds, [0053] – ...each purchase made by the account holder using the financial transaction card (whether physical or virtual)... and [0063] - ... the customer may provide a purchase card number and other identifying information...) and further teaches [...]:
receiving, by the computing device and from a terminal, a second request comprising the instrument number (Reynolds, [0053] – ...each purchase made by the account holder using the financial transaction card (whether physical or virtual)... and [0063] - ... the customer may provide a purchase card number and other identifying information...);
approving, the second request, based at least in part on a confirmation that sufficient funds exist in the ... account ([0057] - In step 220, the interchange or the financial institution or its agent determines whether the transaction triggers one or more of the criteria for installment loan processing specified for the financial transaction card account of the account holder. In step 230, if the transaction does not trigger any of the criteria for installment loan processing, normal financial transaction card processing is performed--i.e., the financial institution or its agent accepts or rejects the transaction based on at least a determination of whether the transaction would exceed the credit line of the financial transaction card account. If one or more of the criteria for installment loan processing is triggered, in step 240 the interchange or the financial institution or its agent determines whether the transaction amount is greater than the available installment loan credit amount, which is equal to the installment loan credit limit minus the total installment loans balances due for the financial transaction card account. If the transaction amount exceeds the available installment loan credit amount, the transaction is rejected in step 250 and [0063]); and
generating, by the computing device, a statement that indicates at least in part that the second request ... (Reynolds, [0047] - Alternatively, the account holder may be have the option of receiving a physical card that is linked to the virtual financial transaction card account. The physical card may... have the same account number as the virtual financial transaction card account and [0059]-[0060] – The statements are typically processed on a monthly basis. In step 300, the card account record is retrieved from the financial institution's database. In step 305, the transactions that have been captured for the card account, both on a credit and on an installment loan basis, are totaled.,,, the statement is printed and mailed... lists a summary of the credit... actives on the first page);
Therefore, it would have been obvious to one of ordinarily skill in the art before the effective filing date of the claimed invention to combine the teachings of Reynolds to the instantaneous instrument of Grossman to include [concepts of] instantaneous instrument and further receiving, by the computing device and from a terminal, a second request comprising the instrument number; approving, the second request, based at least in part on a confirmation that sufficient funds exist in the ... account; and generating, by the computing device, a statement that indicates at least in part that the second request [...].
One would have been motivated to combine the teachings of Reynolds to Grossman to do so as it provides / allows a summary of credit actives (Reynolds, [0060]).
Further, in an analogous art, Feng teaches
...at least a cryptocurrency account ([0018] - Examples of such a financial institution account associated with a user from which funds may be sourced for payments include checking and savings accounts, credit card accounts, a line of credit, electronic currency account (such as Bitcoin), and others as will occur to readers of skill in the art);
...based at least in part on a finding that the cryptocurrency account exceeds a preset minimum amount of funds ([0019] -Each such account may have various characteristics. To that end, as mentioned above, the funds allocation tool (102) retrieves from each fund source (116) information (104) describing available funds. Such information (104), at a minimum, includes an available balance which may be utilized to fund a payment. Available funds information (104), however, may also include account-specific information, such as a minimum required balance, an annual percentage yield (APY), upcoming debits or credits to the account, costs associated with making electronic transfers to fund a payment, fees associated with the funding account, rewards details, and the like. Rewards details may, for example, specify that a particular credit card account provides 6% cash back for payments to a utility company); and
[concepts of] a cryptocurrency account ([0018]-[0019]).
Therefore, it would have been obvious to one of ordinarily skill in the art before the effective filing date of the claimed invention to combine the teachings of Feng to the statement and virtual chip card of Grossman and Reynolds to include ...at least a cryptocurrency account; ...based at least in part on a finding that the cryptocurrency account exceeds a preset minimum amount of funds; and [concepts of] a cryptocurrency account.
One would have been motivated to combine the teachings of Anonymous to Grossman and Reynolds to do so as it provides / allows users with a means for accurate record keeping of transactions.
Further, in an analogous art, Anonymous teaches generating, by the computing device, a statement that indicates at least in part that the second request corresponds to the instantaneous instrument, as Anonymous states that American Express provided disclosures that stated ApplePay transactions would show up as “AplPay” on the statement. Thus, the statement would have differentiated normal transactions (i.e., merchant OR or MCC) vs ApplePay “AplPay”.
Therefore, it would have been obvious to one of ordinarily skill in the art before the effective filing date of the claimed invention to combine the teachings of Anonymous to the statement and virtual chip card of Grossman and Reynolds and Feng to include generating, by the computing device, a statement that indicates at least in part that the second request corresponds to the instantaneous instrument
One would have been motivated to combine the teachings of Anonymous to Grossman and Reynolds and Feng to do so as it provides / allows users with a means for accurate record keeping of transactions.
Regarding Claim(s) 8; claim(s) 8 is/are directed to a/an system associated with the method claimed in claim(s) 1. Claim(s) 8 is/are similar in scope to claim(s) 1, and is/are therefore rejected under similar rationale.
Regarding Claim(s) 15; claim(s) 15 is/are directed to a/an medium associated with the method claimed in claim(s) 1. Claim(s) 15 is/are similar in scope to claim(s) 1, and is/are therefore rejected under similar rationale.
Claim(s) 2-3, 9-10, and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grossman et al. (US 2014/0188704 A1) in view of Reynolds et al. (US 2010/0094735 A1) and Feng (US 2017/0046674 A1) and Anonymous, “Apple Pay May Interfere With Rewards” as found on www.FlyerTalk.com which was archived by web.archive.org on 10/24/2014 and further in view of DeFore (US 2013/0003104 A1).
Regarding Claim 2;
Grossman in view of Reynolds and Feng and Anonymous disclose the method to Claim 1.
Grossman further discloses further comprising: generating, by the computing device, [the] physical card/physical instrument.
Grossman in view of Reynolds and Feng and Anonymous fail to explicitly disclose further comprising: generating, by the computing device, a security code that corresponds to the instrument number; and sending, by the computing device, instructions to print a physical instrument, wherein the instrument number and the security code are displayed on a surface of the physical instrument as a result of printing the physical instrument.
However, in an analogous art, DeFore teaches further comprising: generating, by the computing device, a security code that corresponds to [a] instrument number ([0054] Based on the received PAN and expiration date, the server 122 may calculate a card verification value (CVV), a card verification value 2 (CVV2), and a personal identification number (PIN) offset value); and sending, by the computing device, instructions to print a physical instrument, wherein the instrument number and the security code are displayed on a surface of the physical instrument as a result of printing the physical instrument (FIG. 1 and [0012]-[0013] - The method also includes merging, at the customized personalization document printer, the actual rendering data and the personalized account data to generate printing data. Further, the method includes printing, at the customized personalization document printer, the printing data onto a personalization document to create the customized personalization document while the document holder is present and The method also includes merging, at the customized personalization document printer, the actual rendering data and the personalized account data to generate printing data. Further, the method includes printing, at the customized personalization document printer, the printing data onto a personalization document to create the customized personalization document while the document holder is present and [0055] - The server 122 transmits personalized account data (i.e., the customer name, the CVV, the CVV2, the PIN offset value, the PAN, the expiration date, etc.) and rendering instruction data to the personalization card printer 116. Rendering instruction data is data that instructs the personalization card printer 116 as to the type of rendering to be performed onto a customized personalization card 114 (i.e., the type of card template, the background image, the type of logos, the type of fonts, etc. and [0063])
Therefore, it would have been obvious to one of ordinarily skill in the art before the effective filing date of the claimed invention to combine the teachings of DeFore to the instrument number of Grossman in view of Reynolds and Feng and Anonymous to include further comprising: generating, by the computing device, a security code that corresponds to [a] instrument number; and sending, by the computing device, instructions to print the physical card, wherein the instrument number and the security code are displayed on a surface of the physical instrument as a result of printing the physical instrument.
One would have been motivated to combine the teachings of DeFore to Grossman in view of Reynolds and Feng and Anonymous to do so as it provides / allows an instant issuance system may be implemented at a lower cost (DeFore, [0008]).
Regarding Claim 3;
Grossman in view of Reynolds and Feng and Anonymous and DeFore disclose the method to Claim 2.
Anonymous further teaches wherein the statement further indicates at least in part that a third request corresponds to the physical instrument, the third request comprising the instrument number as Anonymous states that American Express provided disclosures that stated ApplePay transactions would show up as “AplPay” on the statement. Thus, the statement would have differentiated normal transactions (i.e., merchant OR or MCC) vs ApplePay “AplPay”.
Similar rationale and motivation is noted for the combination of Anonymous to Grossman in view of Reynolds and Feng and Anonymous and DeFore, as per claim 1, above.
Regarding Claim(s) 9-10; claim(s) 9-10 is/are directed to a/an system associated with the method claimed in claim(s) 2-3. Claim(s) 9-10 is/are similar in scope to claim(s) 2-3, and is/are therefore rejected under similar rationale.
Regarding Claim(s) 16-17; claim(s) 16-17 is/are directed to a/an medium associated with the method claimed in claim(s) 2-3. Claim(s) 16-17 is/are similar in scope to claim(s) 2-3, and is/are therefore rejected under similar rationale.
Claim(s) 4, 11, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grossman et al. (US 2014/0188704 A1) in view of Reynolds et al. (US 2010/0094735 A1) and Feng (US 2017/0046674 A1) and Anonymous, “Apple Pay May Interfere With Rewards” as found on www.FlyerTalk.com which was archived by web.archive.org on 10/24/2014 and further in view of Strum (US 2007/0045401 A1).
Regarding Claim 4;
Grossman in view of Reynolds and Feng and Anonymous disclose the method to Claim 1.
Grossman further discloses wherein the first request comprises ...to open the instantaneous instrument ([0005] - In some embodiments, the customer request for a new card number comprises a customer request for a new card number associated with a new account and [0027]-[0029] and [0031]);
Grossman in view of Reynolds and Feng and Anonymous fail to explicitly disclose wherein the first request comprises user information and the method further comprises evaluating, by the computing device and in response to receiving the first request, the first request to determine that the user information satisfies each requirement of a set of minimum requirements to open [an account]
However, in an analogous art, Strum teaches wherein [a] first request comprises user information and the method further comprises evaluating, by the computing device and in response to receiving the first request, the first request to determine that the user information satisfies each requirement of a set of minimum requirements to open [an account] ([0009] - On Jul. 17, 2002, the Department of the Treasury and seven federal financial institution regulators issued proposed rules pertaining to Section 326 of the USA Patriot Act. The Act includes provisions for fighting international money laundering and blocking terrorist access to the U.S. financial system. Section 326 of the Act addresses the creation of minimum requirements for verification of customer identification in the new account opening process. These rules are directed at financial institutions, which are defined as banks, insurance companies, mutual funds, credit card companies, money service businesses, broker dealers, futures commission merchants and casinos. Final rules were issued on May 9, 2003, which required financial institutions to be in compliance therewith by Oct. 1, 2003.)
Therefore, it would have been obvious to one of ordinarily skill in the art before the effective filing date of the claimed invention to combine the teachings of Strum to the first request of Grossman in view of Reynolds and Feng and Anonymous to include wherein [a] first request comprises user information and the method further comprises evaluating, by the computing device and in response to receiving the first request, the first request to determine that the user information satisfies each requirement of a set of minimum requirements to open the instantaneous instrument
One would have been motivated to combine the teachings of Strum to Grossman in view of Reynolds and Feng and Anonymous to do so as it provides / allows provisions for fighting international money laundering and blocking terrorist access to the U.S. financial system (Strum, [0009]).
Regarding Claim(s) 11 claim(s) 11 is/are directed to a/an system associated with the method claimed in claim(s) 4. Claim(s) 11 is/are similar in scope to claim(s) 4, and is/are therefore rejected under similar rationale.
Regarding Claim(s) 18; claim(s) 18 is/are directed to a/an medium associated with the method claimed in claim(s) 4. Claim(s) 18 is/are similar in scope to claim(s) 4, and is/are therefore rejected under similar rationale.
Claim(s) 5-6, 12-13, and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grossman et al. (US 2014/0188704 A1) in view of Reynolds et al. (US 2010/0094735 A1) and Feng (US 2017/0046674 A1) and Anonymous, “Apple Pay May Interfere With Rewards” as found on www.FlyerTalk.com which was archived by web.archive.org on 10/24/2014 and further in view of Meredith et al. (US 2016/0330243 1)
Regarding Claim 5;
Grossman in view of Reynolds and Feng and Anonymous disclose the method to Claim 1.
Grossman further discloses wherein the first request comprises ...to open the instantaneous instrument ([0005] - In some embodiments, the customer request for a new card number comprises a customer request for a new card number associated with a new account and [0027]-[0029] and [0031]);
Grossman in view of Reynolds and Feng and Anonymous fail to explicitly disclose wherein the first request comprises user information and the method further comprising: assigning, by the computing device, each portion of the user information a score to generate a set of scores; averaging, by the computing device, each score in the set of scores to calculate an evaluation score; and comparing, by the computing device, the evaluation score to a threshold value.
However, in an analogous art, Meredith teaches wherein [a] first request comprises user information and the method further comprising: assigning, by the computing device, each portion of the user information a score to generate a set of scores ([0013] - For new customers, system 26 determines this characteristic by analyzing responses to an online survey (e.g., enrollment questionnaire 44a) submitted by users when creating their account and [0040] - As shown in the above Table 6, the rule-based recommendation is an average of the values of the tiers assigned to the user characteristics (e.g., User Characteristic 1+ . . . +User Characteristic n). For the tiers assigned to user characteristics shown in the above Table 5, hybrid engine 34 calculates an average value of 2.5 (e.g., the average of the tiers shown in Table 5). Based on this calculation, hybrid engine 34 determines that the rule-based recommendation is either tier 2 or tier 3, depending on whether hybrid engine 34 is configured to round up or to round down. In a variation, hybrid engine 34 determines the rule-based aggregation by applying one or more operations to the tiers assigned to the various user characteristics. These operations include aggregation operations. In a variation, hybrid engine 34 applies one or more weights to the values representing the tiers, e.g., that are used in computing the rule-based recommendation. When customer profile information in data repository 28 is less than the threshold amount required for collaborative filtering, system 26 only generates a rule-based recommendation); averaging, by the computing device, each score in the set of scores to calculate an evaluation score ([0013] - For new customers, system 26 determines this characteristic by analyzing responses to an online survey (e.g., enrollment questionnaire 44a) submitted by users when creating their account and [0040] - As shown in the above Table 6, the rule-based recommendation is an average of the values of the tiers assigned to the user characteristics (e.g., User Characteristic 1+ . . . +User Characteristic n). For the tiers assigned to user characteristics shown in the above Table 5, hybrid engine 34 calculates an average value of 2.5 (e.g., the average of the tiers shown in Table 5). Based on this calculation, hybrid engine 34 determines that the rule-based recommendation is either tier 2 or tier 3, depending on whether hybrid engine 34 is configured to round up or to round down. In a variation, hybrid engine 34 determines the rule-based aggregation by applying one or more operations to the tiers assigned to the various user characteristics. These operations include aggregation operations. In a variation, hybrid engine 34 applies one or more weights to the values representing the tiers, e.g., that are used in computing the rule-based recommendation. When customer profile information in data repository 28 is less than the threshold amount required for collaborative filtering, system 26 only generates a rule-based recommendation.); andcomparing, by the computing device, the evaluation score to a threshold value ([0013] - For new customers, system 26 determines this characteristic by analyzing responses to an online survey (e.g., enrollment questionnaire 44a) submitted by users when creating their account and [0040] - As shown in the above Table 6, the rule-based recommendation is an average of the values of the tiers assigned to the user characteristics (e.g., User Characteristic 1+ . . . +User Characteristic n). For the tiers assigned to user characteristics shown in the above Table 5, hybrid engine 34 calculates an average value of 2.5 (e.g., the average of the tiers shown in Table 5). Based on this calculation, hybrid engine 34 determines that the rule-based recommendation is either tier 2 or tier 3, depending on whether hybrid engine 34 is configured to round up or to round down. In a variation, hybrid engine 34 determines the rule-based aggregation by applying one or more operations to the tiers assigned to the various user characteristics. These operations include aggregation operations. In a variation, hybrid engine 34 applies one or more weights to the values representing the tiers, e.g., that are used in computing the rule-based recommendation. When customer profile information in data repository 28 is less than the threshold amount required for collaborative filtering, system 26 only generates a rule-based recommendation.).
Therefore, it would have been obvious to one of ordinarily skill in the art before the effective filing date of the claimed invention to combine the teachings of Meredith to the first request of Grossman in view of Reynolds and Feng and Anonymous to include wherein [a] first request comprises user information and the method further comprising: assigning, by the computing device, each portion of the user information a score to generate a set of scores; averaging, by the computing device, each score in the set of scores to calculate an evaluation score; and comparing, by the computing device, the evaluation score to a threshold value.
One would have been motivated to combine the teachings of Meredith to Grossman in view of Reynolds and Feng and Anonymous to do so as it provides / allows a security level represents an amount of authentication required to verify that a user is an authorized user (Meredith, [0001])
Regarding Claim 6;
Grossman in view of Reynolds and Feng and Anonymous and Meredith disclose the method to Claim 5.
Meredith further teaches further comprising applying, by the computing device and prior to averaging each score in the set of scores to calculate the evaluation score, a weight to a first score in the set of scores ([0013] - For new customers, system 26 determines this characteristic by analyzing responses to an online survey (e.g., enrollment questionnaire 44a) submitted by users when creating their account and [0040] - As shown in the above Table 6, the rule-based recommendation is an average of the values of the tiers assigned to the user characteristics (e.g., User Characteristic 1+ . . . +User Characteristic n). For the tiers assigned to user characteristics shown in the above Table 5, hybrid engine 34 calculates an average value of 2.5 (e.g., the average of the tiers shown in Table 5). Based on this calculation, hybrid engine 34 determines that the rule-based recommendation is either tier 2 or tier 3, depending on whether hybrid engine 34 is configured to round up or to round down. In a variation, hybrid engine 34 determines the rule-based aggregation by applying one or more operations to the tiers assigned to the various user characteristics. These operations include aggregation operations. In a variation, hybrid engine 34 applies one or more weights to the values representing the tiers, e.g., that are used in computing the rule-based recommendation. When customer profile information in data repository 28 is less than the threshold amount required for collaborative filtering, system 26 only generates a rule-based recommendation.).
Similar rationale and motivation is noted for the combination of Meredith to Grossman in view of Reynolds and Feng and Anonymous and Meredith, as per claim 1, above.
Regarding Claim(s) 12-13; claim(s) 12-13 is/are directed to a/an system associated with the method claimed in claim(s) 6-7. Claim(s) 12-13 is/are similar in scope to claim(s) 6-7, and is/are therefore rejected under similar rationale.
Regarding Claim(s) 19-20; claim(s) 19-20 is/are directed to a/an medium associated with the method claimed in claim(s) 6-7. Claim(s) 19-20 is/are similar in scope to claim(s) 6-7, and is/are therefore rejected under similar rationale.
Claim(s) 7 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grossman et al. (US 2014/0188704 A1) in view of Reynolds et al. (US 2010/0094735 A1) and Feng (US 2017/0046674 A1) and Anonymous, “Apple Pay May Interfere With Rewards” as found on www.FlyerTalk.com which was archived by web.archive.org on 10/24/2014 and further in view of Khan et al. (US 2008/0058014 A1)
Regarding Claim 7;
Grossman in view of Reynolds and Feng and Anonymous disclose the method to Claim 1.
Grossman further discloses ...the instantaneous instrument ([0005] - In some embodiments, the customer request for a new card number comprises a customer request for a new card number associated with a new account and [0027]-[0029] and [0031]).
Grossman in view of Reynolds and Feng and Anonymous fail to explicitly disclose further comprising transmitting, by the computing device and to the client device, encrypted information about the .... instrument.
However, in an analogous art, Khan teaches further comprising transmitting, by the computing device and to the client device, encrypted information about the .... instrument. ([0055] - Returning to step 712, if the data is validated, control proceeds to step 718 in FIG. 7B where the card issuer back end network provides card personalization data, an encryption key, and a card image to provisioning an issuer server 110. In step 720, provisioning issuer server 110 encrypts a packet with the session key and sends it to provisioning and payment application 102. In step 722, provisioning and payment application 102 sends the card personalization data to a secure chip present on the mobile trusted handheld device for personalization of the soft card and also stores an image of the soft card in the operating system file system. In step 724, the manual provisioning process ends.)
Therefore, it would have been obvious to one of ordinarily skill in the art before the effective filing date of the claimed invention to combine the teachings of Khan to the ...the instantaneous instrument of Grossman in view of Reynolds and Feng and Anonymous to include further comprising transmitting, by the computing device and to the client device, encrypted information about the .... instrument.
One would have been motivated to combine the teachings of Khan to Grossman in view of Reynolds and Feng and Anonymous to do so as it provides / allows improved... over the air provisioning of soft cards on devices with wireless communications capabilities (Khan, [0008]).
Regarding Claim(s) 14 claim(s) 14 is/are directed to a/an system associated with the method claimed in claim(s) 7. Claim(s) 14 is/are similar in scope to claim(s) 7, and is/are therefore rejected under 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.
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Claim(s) 1, 8, and 15 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,861,592. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 11,861,592 recites a computer implemented method, the method comprising: performing on one or more electronic processors, the following operations: receiving a request to open a virtual chip card for a user; approving the request for the virtual chip card; generating a card number for the virtual chip card which is associated with an account of a user; transmitting the card number for the virtual chip card to a personal computing device operated by the user and causing the virtual chip card to be installed on the personal computing device; causing display of an image of the virtual chip card on a display screen of the personal computing device, wherein the image comprises a name of the user, the card number for the virtual chip card, and an expiration date assigned to the virtual chip card; enabling the user to make a purchase using the virtual chip card, wherein the enabling comprises running software installed on the personal computing device which configures the virtual chip card installed on the personal computing device to perform an authentication process; generating data used to generate a physical card that corresponds to the virtual card and is associated with the account, wherein the generating the data used to generate the physical card comprises generating an appearance of the physical card based on an appearance of the virtual chip card displayed on the display screen of the personal computing device; issuing the physical card and enabling the user to make a purchase using the physical card; and generating a statement for the account and indicating whether a charge was incurred using the virtual chip card or the physical card.
The examiner respectfully notes that limitations cited above in claim 1 of U.S. Patent No. 11,861,592. of anticipate Claim(s) 1, 8, and 18 of the Instant Application. Therefore claim(s) 11, 8, and 18 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,861,592.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ASFAND M SHEIKH whose telephone number is (571)272-1466. The examiner can normally be reached Mon-Fri: 7a-3p (MDT).
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/ASFAND M SHEIKH/ Primary Examiner, Art Unit 3626