DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s correspondence filed on 10/8/25.
The Examiner notes that citations to United States Patent Application Publication paragraphs are formatted as [####], #### representing the paragraph number.
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 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.
Status of Claims
Claims 1-20 are currently pending.
Claims 12-14, 19-20 are objected to.
Claims 1-20 are rejected as set forth below.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Objections
Claims 12-14, 19-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and if any outstanding rejections are addressed.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 10282724. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the ‘724 claims anticipate the scope of the instant claims.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-8, 15-17 are rejected under 35 U.S.C. 103(a) as being unpatentable over United States Patent Application Publication No. 20090173782 to Muscato in view of United States Patent Application Publication No. 20110153496 to Royyuru and United States Patent Application Publication No. 20090143104 to Loh.
As per claim(s) 1, 15, Muscato teaches:
A method comprising: receiving, at a server computer over a secure communications channel, a first request from a mobile device for a device verification value, the first request including account information associated with a portable consumer device; ([0033], “When user 8 uses cardholder device 4 to request a dynamically-generated CVV for a credit card, cardholder device 4 sends a request via network 6 to a card processing server 10.”; [0088], “Web page 201 includes a card number entry feature 202 and a generate feature 204. When user 8 enters a card number for a credit card into card number entry feature 202 and then clicks on generate feature 204, the web browser application may submit the card number to card processing server 10. In this way, user 8 may use user interface 200 to request a dynamically-generated CVV for the credit card.”)
generating, by the server computer, a first device verification, wherein the first device verification value is a temporary first device verification value that is valid for a first predetermined number of transactions or for a first predetermined amount of time; sending, by the server computer, the first device verification value to the mobile device; storing, by the server computer, the first device verification value; ([0034]-[0035], “In response to receiving the request for a dynamically-generated CVV, card processing server 10 dynamically generates a CVV for the credit card. As discussed in detail below, card processing server 10 may dynamically generate the CVV for the credit card in a variety of ways. After card processing server 10 dynamically generates the CVV for the credit card, card processing server 10 stores the dynamically-generated CVV in a database. Furthermore, card processing server 10 stores validation information in the database. Card processing server 10 uses the validation information to validate received CVVs for the credit card. For example, the dynamically-generated CVV may only be valid for a limited period of time. In this example, to ensure that the dynamically-generated CVV is only valid for the limited period of time, card processing server 10 may store validation information that indicates a last time that the dynamically-generated CVV is valid. In this example, card processing server 10 may establish a time period associated with the dynamically-generated CVV that indicates that the dynamically-generated CVV is only valid for 48 hours after card processing server 10 generated the dynamically-generated CVV. After storing the dynamically-generated CVV and the validation information, card processing server 10, in response to a request for a dynamically-generated CVV for the credit card, sends the dynamically-generated CVV for the credit card to cardholder device 4 via network 6.”)
receiving, at the server computer, a first authorization request message comprising the first device verification value and the account information associated with the portable consumer device from a first point of sale terminal for a transaction between the mobile device and the first point of sale terminal, wherein the first device verification value was previously transferred to the first point of sale terminal, wherein the account information was previously transferred from the portable consumer device to the first point of sale terminal via an interaction between the portable consumer device and the first point of sale terminal; determining, by the server computer, whether the first device verification value in the first authorization request message corresponds to the stored first device verification value; generating, by the server computer, a first authorization response message based at least in part on whether the first device verification value in the first authorization request message corresponds to the stored first device verification value; and sending the first authorization response message to the first point of sale terminal. ([0047]-[0048], “Subsequently, user 22 may purchase goods or services at a store. When user 22 is ready to pay for the goods or services, user 22 or a cashier may swipe the physical credit card through a magnetic stripe reader of a point-of-sale device 30. Point-of-sale device 30 may be a cash register, a self-checkout machine, or another type of point-of-sale device. In addition to swiping the physical credit card through the magnetic stripe reader, user 22 enters the dynamically-generated CVV for the credit card into a CVV entry device 32. When user 22 enters the dynamically-generated CVV into CVV entry device 32, CVV entry device 32 transmits the dynamically-generated CVV to point-of-sale device 30. When point-of-sale device 30 receives the dynamically-generated CVV, point-of-sale device 30 or another device transmits a transaction request to card processing server 28. The transaction request specifies a card number of the credit card, an expiry date of the credit card, a service code of the credit card, and the dynamically-generated CVV. In addition, the transaction request may specify an amount to be charged to the account of a cardholder of the credit card and may specify the merchant operating point-of-sale device 30 and other information. Card processing server 28 processes the economic transaction in a similar manner as card processing server 10 (FIG. 1) processes the transaction request.”; [0040], “When card processing server 10 receives the details of the credit card and the amount of the charge, card processing server 10 may determine whether the CVV submitted with the details of the credit card is valid. To determine whether the CVV provided in the transaction request is valid, card processing server 10 may determine whether card processing server 10 stores a copy of a dynamically-generated CVV for the credit card. As described above, card processing server 10 stores copies of dynamically-generated CVVs for credit cards along with validation information that can be used to determine whether the dynamically-generated CVVs are valid.”)
Muscato does not explicitly teach wherein the first device verification value was previously transferred from the mobile device to the first point of sale terminal via an interaction between the mobile device and the first point of sale terminal. However, it would have been obvious to one of ordinary skill in the art at the time of invention to rearrange the functionality of transferring the first device verification value to the first point of sale terminal from the CVV entry device 32 to the cardholder device 4. It is well within the knowledge of one of ordinary skill to rearrange software functions, such as transmitting data to a point-of-sale terminal, between computers due to the interchangeable nature of software. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975). Furthermore, rearranging the functionality onto the cardholder device 4 would require one less device, thus improving the overall efficiency of the invention.
Muscato does not explicitly teach, but Royyuru teaches:
the first request including account information associated with a portable consumer device and information associated with the mobile device; ([0043], “The payment processor system 350 can receive the request for the card-not-present transaction. The request for the card-not-present transaction can be received from either the client device 305 or the merchant system 340 as noted above. In either case, the request can include information identifying the user of the client device 305 but which is not sufficient for conducting a financial transaction. For example, the information identifying the user of the client device can comprise one or more of a phone number, an email address, a last four digits of the true PAN and/or other such identifying information.”)
performing, by the server computer, a first validation test pertaining to the first request to validate the mobile device; generating, by the server computer, a first device verification value based on at least the first validation test, wherein the temporary first device verification value includes information related to validation of at least the mobile device; ([0044], “The payment processor system 350 can read the enrollment information 355 for the user of the client device 305 and authenticate the user of the client device 305, e.g., via an authentication module 361, based at least in part on the information of the request identifying the user of the client device 305 and the enrollment information 355 for the user of the client device 305. In response to authenticating the user of the client device 305, the payment processor system 350 can generate, e.g., via generation module 360, the set of single-use payment information.)
Applicant attempts to further limit the method by describing characteristics of the first device verification value. However, this is representative of non-functional descriptive material as characteristics of the first device verification value does not result in a functional relationship with the method and therefore cannot be used to differentiate Applicant's invention from the prior art invention. See MPEP 2111.05; In re Gulack, 217 USPQ 401 (Fed. Cir. 1983) (“When descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability.”). Specifically, the step of generating and processing the first device verification value is carried out the same way regardless of the information included in the first device verification value: there is no evidence the characteristics of the first device verification value changes the efficiency or the accuracy or any other characteristic of the generating/processing. See Ex Parte Nehls, 88 USPQ2d 1883 (BPAI 2008) (“Here, the descriptive material (SEQ ID NOs) recited in the claims is not functional material like the data structures in Lowry. There is no evidence that SEQ ID NOs 9-1008 functionally affect the process of comparing a target sequence to a database by changing the efficiency or accuracy or any other characteristic of the comparison. Rather, the SEQ ID NOs are merely information being manipulated by a computer; the SEQ ID NOs are inputs used by a computer program that calculates the degree of similarity between a target sequence and each of the sequences in a database. The specific SEQ ID NOs recited in the claims do not affect how the method of the prior art is performed – the method is carried out the same way regardless of which specific sequences are included in the database (emphasis added).”)
One of ordinary skill in the art would have recognized that applying the known technique of Royyuru to the known invention of Muscato would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such authentication features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention so the first request including account information associated with a portable consumer device and information associated with the mobile device and to include the step of performing, by the server computer, a first validation test pertaining to the first request to validate the mobile device; generating, by the server computer, a first device verification value based on at least the first validation test, wherein the temporary first device verification value includes information related to validation of at least the mobile device, results in an improved invention because applying said technique ensures that the first request is appropriately authenticated before generating and transmitting the first device verification value, thus improving the overall security of the invention.
Muscato as modified does not explicitly teach, but Loh teaches:
wherein the account information is based on an interaction between the mobile device and the portable consumer device; ([0056], “In another example, customers can use the wireless smart card 104 for network payments. The mobile communication device 108 can communicate with the wireless smart card 104 to make online purchases at the mobile communication device 108. The wireless smart card 104 transmits the transaction credentials stored at the wireless smart card 104 through the Bluetooth (or other personal area network) between the mobile communication device 108 and the wireless smart card 104).”)
One of ordinary skill in the art would have recognized that applying the known technique of Lou to the known invention of Muscato as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such portable consumer device features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to receive account information stored on the portable consumer device based on an interaction between the portable consumer device and the mobile device results in an improved invention because it ensures that only credentials stored and secured on the portable consumer device are used in a transaction, thus reducing the possibility of a fraudulent credential being used and therefore improving the overall security of the invention.
As per claim(s) 2, Muscato teaches:
wherein the first authorization response message indicates that the transaction is approved based at least in part on the determination that the first device verification value in the first authorization request message is the same as the stored first device verification value. ([0040])
As per claim(s) 3, Royyuru teaches:
sending the first device verification value to the mobile device based on the determination that the first validation test is passed. ([0046], “In another example, the system may further comprise a mobile phone 310 or other mobile device of the user/consumer. In such a case, a phone number in the enrolled information 355, i.e., registered by the user/consumer during enrollment, can comprise a phone number of the mobile phone 310 and providing the single-use payment information to the enrolled consumer/user can comprise sending an email message or a Short Message Service (SMS) message including the single-use payment information from the payment processor system 305 to the mobile phone 310. In another case, providing the single-use payment information to the enrolled consumer/user can comprise sending the data to the application or applet (not shown) on the mobile phone 310.”)
As per claim(s) 4, Muscato teaches:
wherein the first authorization response message indicates that the transaction is denied based on the determination that the first device verification value in the first authorization request message is not the same as the stored first device verification value. ([0082], “If validation module 64 determines that the time period associated with the corresponding CVV has expired ("YES" of 180), or if the transaction limit for the provided CVV has been exceeded ("YES" of 178), or if validation module 64 determines that the provided CVV does not correspond to any of the dynamically-generated CVVs for the credit card ("NO" of 176), message module 66 sends a transaction rejection message to the merchant specified in the transaction request (182). Message module 66 sends the transaction rejection message because validation module 64 has determined that the provided CVV is not valid. The transaction rejection message indicates to the merchant that the transaction request has been rejected.”)
As per claim(s) 5:
Applicant attempts to further limit the method by describing characteristics of the information associated with the mobile device. However, this is representative of non-functional descriptive material as characteristics of the information associated with the mobile device does not result in a functional relationship with the method and therefore cannot be used to differentiate Applicant's invention from the prior art invention. See MPEP 2111.05; In re Gulack, 217 USPQ 401 (Fed. Cir. 1983) (“When descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability.”). Specifically, the step of generating the first request is carried out the same way regardless of the type of information associated with the mobile device: there is no evidence the characteristics of the information associated with the mobile device changes the efficiency or the accuracy or any other characteristic of the generating. See Ex Parte Nehls, 88 USPQ2d 1883 (BPAI 2008) (“Here, the descriptive material (SEQ ID NOs) recited in the claims is not functional material like the data structures in Lowry. There is no evidence that SEQ ID NOs 9-1008 functionally affect the process of comparing a target sequence to a database by changing the efficiency or accuracy or any other characteristic of the comparison. Rather, the SEQ ID NOs are merely information being manipulated by a computer; the SEQ ID NOs are inputs used by a computer program that calculates the degree of similarity between a target sequence and each of the sequences in a database. The specific SEQ ID NOs recited in the claims do not affect how the method of the prior art is performed – the method is carried out the same way regardless of which specific sequences are included in the database (emphasis added).”)
As per claim(s) 6, Muscato teaches:
wherein the device verification value includes a dynamic card verification value 2 (dCVV2), a dynamic primary account number (dPAN), or a shared secret value. ([0033])
As per claim(s) 7, Royyuru teaches:
wherein the first request for the device verification value includes information associated with account holder. ([0043])
As per claim(s) 8, 17, Loh teaches:
wherein the interaction between the mobile device and the first point of sale terminal comprises short-range wireless communication. ([0034], [0039], “The wireless smart card 104 is configured to read, upload download, or exchange information between the transaction device 112 and the mobile communication device 108. The mobile communication device 108 is typically a cellular phone, but it will be appreciated that the mobile communication device 108 may be other mobile computing devices, such as a Personal Digital Assistant (PDA), Tablet Personal Computer (Tablet PC), and the like. The mobile communication device 108 includes a transceiver (not shown) for communicating with the wireless smart card 104 through the PAN transceiver 124 of the wireless smart card 104. In one embodiment, the mobile communication device 108 and wireless smart card communicate via Bluetooth.”)
As per claim(s) 16, Loh teaches:
the mobile device; a verification token coupled to the mobile device configured to obtain the account information from the portable consumer device; and the portable consumer device storing the account information, wherein the portable consumer device is configured to interact with the mobile device and the first point of sale terminal to transmit the account information to the mobile device and the first point of sale terminal, respectively. ([0039], “The mobile communication device 108 is typically a cellular phone, but it will be appreciated that the mobile communication device 108 may be other mobile computing devices, such as a Personal Digital Assistant (PDA), Tablet Personal Computer (Tablet PC), and the like. The mobile communication device 108 includes a transceiver (not shown) for communicating with the wireless smart card 104 through the PAN transceiver 124 of the wireless smart card 104.”; [0055]-[0056], “For example, in contactless payment transactions, customer credentials (e.g., credit card number, etc.) are passed from the wireless smart card 104 to the payment terminal 112a through the secure, wireless communication channel, by presenting the wireless smart card at the payment terminal 112a in a tap or wave fashion. The payment terminal 112a communicates the information to the transaction processing center 120 which processes the transaction using applicable standards. The details of the transaction can be communicated back to the wireless smart card 104 for review or verification by the consumer. In another example, customers can use the wireless smart card 104 for network payments. The mobile communication device 108 can communicate with the wireless smart card 104 to make online purchases at the mobile communication device 108. The wireless smart card 104 transmits the transaction credentials stored at the wireless smart card 104 through the Bluetooth (or other personal area network) between the mobile communication device 108 and the wireless smart card 104).”)
Claims 9-11, 18 are rejected under 35 U.S.C. 103(a) as being unpatentable over United States Patent Application Publication No. 20090173782 to Muscato in view of United States Patent Application Publication No. 20110153496 to Royyuru and United States Patent Application Publication No. 20090143104 to Loh, and further in view of United States Patent Application Publication No. 20020112171 to Ginter.
As per claim(s) 9, Muscato as modified does not explicitly teach, but Ginter teaches:
sending, by the server computer, data to the mobile device via a secure communications session. ([1681], “From time to time, two parties (e.g., PPEs A and B), will need to establish a communication channel that is known by both parties to be secure from eavesdropping, secure from tampering, and to be in use solely by the two parties whose identifies are correctly known to each other.”; [1710]-[1721], “”These steps allows A to specify a session key to be associated with all further traffic related to A's specific communication proposal. A must create the key, prove that A created it, and prove that it is associated with the specific proposed communication. In addition, A must prove that the session key is generated in response to B's acknowledgement of the proposal. The session key must be protected from disclosure of modification to ensure that an attacker cannot substitute a different value.”)
One of ordinary skill in the art would have recognized that applying the known technique of Ginter to the known invention of Muscato as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such secure communications features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to include the steps of sending, by the server computer, data, i.e. the first device verification value, to the mobile device via a secure communications session results in an improved invention because it ensures that the device verification value can be securely transmitted without being intercepted, therefore improving the overall security of the invention.
As per claim(s) 10, 18, Muscato as modified does not explicitly teach, but Ginter teaches:
registering, by the server computer, the mobile device for a secure communications session, wherein registering establishes a session key; and encrypting, by the server computer, the data using the session key. ([1681], “From time to time, two parties (e.g., PPEs A and B), will need to establish a communication channel that is known by both parties to be secure from eavesdropping, secure from tampering, and to be in use solely by the two parties whose identifies are correctly known to each other.”; [1710]-[1721], “”These steps allows A to specify a session key to be associated with all further traffic related to A's specific communication proposal. A must create the key, prove that A created it, and prove that it is associated with the specific proposed communication. In addition, A must prove that the session key is generated in response to B's acknowledgement of the proposal. The session key must be protected from disclosure of modification to ensure that an attacker cannot substitute a different value.”; [1532], “Symmetric algorithms are algorithms where the encryption key can be calculated from the decryption key and vice versa. In many such systems, the encryption and decryption keys are the same. The algorithms, also called "secret-key", "single key" or "shared secret" algorithms, require a sender and receiver to agree on a key before ciphertext produced by a sender can be decrypted by a receiver. This key must be kept secret.”)
One of ordinary skill in the art would have recognized that applying the known technique of Ginter to the known invention of Muscato as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such secure communications features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to include the steps of registering, by the server computer, the mobile device for a secure communications session, wherein registering establishes a session key; and encrypting, by the server computer, the data using the session key, results in an improved invention because it ensures that the device verification value can be securely transmitted without being intercepted, therefore improving the overall security of the invention.
As per claim(s) 11, Ginter teaches:
terminating, by the server computer, the secure communications session upon sending the first device verification value to the mobile device. ([1681], [1710]-[1721])
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
United States Patent Application Publication No. 20120153028 to Poznansky discloses an invention wherein the transaction card of the invention comprises a Card Verification Value (CVV) generator unit that generates a new CVV code each time the card user is invited to enter his CVV code, typically in a remote transaction. The CVV code is displayed on a screen on the transaction card. The screen can be a liquid crystal display (LCD) screen or any similar or newer display technology.
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/JAY HUANG/Primary Examiner, Art Unit 3619