DETAILED ACTION
Status of the Claims
1. This action is in response to Applicant’s Request for Reconsideration dated May 13, 2026.
2. Applicant has elected Invention III, Claims 13-20, without traverse, for continued prosecution. Claims 1-12 were non-elected by Applicant.
3. Claims 1-12 have been withdrawn.
4. Claims 13-17 and 19-20 are pending and have been examined.
5. Claims 13 and 16-17 have been amended.
6. Claim 18 has been canceled.
Notice of Pre-AIA or AIA Status
7. 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.
8. Claims 13-17 and 19-20 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.
The amendment filed May 13, 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
As in Claim 13:
a mobile device including a processor, memory, location sensing capability and near-field communication (NFC) capability, the mobile device running a digital banking systems application (app);
determining a current location of the mobile device using the location sensing capability;
Applicant’s specification does not disclose a “location sensing capability” per se. Rather, the specification discloses that the mobile device 106 may also include a positioning device 108, which can be for example a global positioning system device (GPS) configured to be used by a positioning system to determine a location of the mobile device 106. (See Applicant Spec para 34) The disclosure continues, indicating that in other embodiments, the positioning device includes a proximity sensor or transmitter that can sense or be sensed by devices known to be located proximate a merchant or other location to determine that the consumer mobile device 106 is located proximate to these known devices. (Id.) The specification also discloses that the mobile device uses location services to identify its own physical location. (See Applicant Spec paras 75 and 80)
As such, the recitation of “location sensing capability” is broader than the specification discloses.
Dependent Claims 14-17 and 19-20 are further rejected as based upon a rejected base claim.
Applicant is required to cancel the new matter in the reply to this Office Action.
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.
9. Claims 13-17 and 19-20 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.
Claim 13 recites in part “determining a location of the ATM by the app in communication with the remote computing device and determining that the ATM qualifies as the nearby cash dispensing device”
The term “qualifies” in claim 13 is a relative term which renders the claim indefinite. The term “qualifies” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The specification does not describe how the ATM “qualifies” as the nearby cash dispensing device and the claim similarly does not describe how the ATM qualifies.
Dependent claims 14-17 and 19-20 are further rejected as dependent on a rejected base claim. Appropriate correction is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
10. Claim(s) 13-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US Patent 11,257,067) (“Yang”) in view of Dixon et al. (US PG Pub. 11,715,084) (“Dixon”) and Naik et. al. (US PG Pub. 2018/0165663) (“Naik”)
Regarding Claim 13, Yang discloses the following:
A cardless cash withdrawal system enabled by near-field communication, said system comprising:
a mobile device including a processor, memory, location sensing capability and near-field communication (NFC) capability, the mobile device running a digital banking systems application (app), (See Yang, Col. 3, lines 55-64; Col. 4, lines 1-46, 63-67; Col. 5, lines 1-13, 20-28, Col. 8, lines 32-40, Fig. 1; – touchless transaction computing system includes a user mobile device, a provider institution computing system and the one or more user-interactive devices which are each communicably coupled and configured to exchange information over a network; user mobile device may be a mobile computing device associated with a user and is shown to include a network interface circuit, a processing circuit, a mobile application, and an input/output circuit; the network interface circuit [of the mobile computing device] enables the user mobile device to transmit and/or receive information to/from the provider institution computing system [remote computing device] and the one or more user-interactive devices 140 and may include a combination of wireless network transceivers (e.g., cellular modem, a NFC transceiver, a Bluetooth receiver, a WiFi transceiver, etc.) and/or a wired network transceivers; the processing circuit [of the mobile computing device] includes a memory and a processor; the user mobile device is configured to run a variety of application programs and store associated data in a database of the memory where one such application may be the provider institution mobile application [digital banking systems app]; the mobile device includes a mobile application (also referred to as client application), mobile client application and/or provider institution client application that is provided by and coupled to the provider institution computing system. In the example shown, the mobile application is structured as a mobile banking application developed and maintained by the provider institution [digital banking systems app])
a remote computing device which is in communication with and interacts with the mobile device running the digital banking systems application; and (See Yang, Col. 3, lines 55-64; Col. 4, lines 1-46, 63-67; Col. 5, lines 1-13, 20-28, Fig. 1)
an automated teller machine (ATM) including a processor, memory and NFC capability, where the ATM is also in communication with the remote computing device, (See Yang, Col. 3, lines 55-64; Col. 4, lines 1-46, 63-67;Col. 5, line 65-Col. 6, line 50; Col. 11, lines 32-41, 59-67; Col. 12, lines 1-39 – user interaction device 140 is an ATM, NFC communication; user-interactive device or ATM includes a network interface circuit, a processing circuit (which includes a memory coupled to a processor), and an input/output circuit; network interface circuit is structured to establish connections with other computing systems (e.g., user mobile device, provider institution computing system)
where the mobile device, the remote computing device and the ATM are configured for performing steps including:
determining an identity of a user, by the app on the mobile device; (See Yang Col. 5, lines 35-48, Col.7, lines 42-56; Col. 10, lines 39-50; Col. 12, line 58-Col. 13, line 12 – determine identity of a user of the user mobile device via the security circuit included with the mobile application)
requesting, by the user using the app on the mobile device, a location of a nearby cash dispensing machine; (See Yang Col. 7, lines 55-66; Col. 10, lines 52-64 – user may choose an ATM via the mobile client application based on location of the user mobile device)
determining a current location of the mobile device using the location sensing capability; (See Yang Col. 7, lines 55-66; Col. 8, lines 32-53; Col. 10, lines 52-64 – ATM may be suggested/recommend based on the location of the user mobile device; security circuit may receive location information of the mobile device via the mobile application, may utilize GPS data to assess position of the mobile device)
determining a location of the ATM by the app in communication with the remote computing device and determining that the ATM qualifies as the nearby cash dispensing device; (See Yang Col. 7, lines 55-Col. 8, line 11; Col. 10, lines 50-65 – location of the ATM may be suggested/recommend based on location of the user mobile device and capabilities desired for the transaction; provider institution computing system may only allow transactions at selected/recommended ATM and receive authorization from provider institution computing system for the pre-staged transaction at a particular ATM (e.g., a recommended or selected ATM)
displaying an address of the ATM, in the app on the mobile device, and options for what action to take, including displaying a button which initiates both preparing a cash withdrawal and receiving navigation instructions to the ATM; (See Yang Col. 10, lines 50-65; Col. 12, line 58-Col. 13, line 39)
preparing the cash withdrawal, by the user using the app, including defining an amount of the cash withdrawal and specifying a mix of bills making up the amount of the cash withdrawal; (See Yang Col. 13, lines 13-39 – designation of transaction type and configuration; withdrawal and preferred currency denomination for withdrawal)
transmitting the identity of the user, the amount of the cash withdrawal and the mix of bills from the app on the mobile device to the remote computing device, and from the remote computing device to the ATM; (See Yang Col. 5, lines 35-48; Col. 7, line 45-Col. 8, line 15, Col. 12, line 58- Col. 13, lines 12; Col. 13, lines 40-55)
following the navigation instructions to the ATM, by the user using the mobile device;
determining that the mobile device is in close proximity of less than five centimeters separation from a designated location on the ATM; (See Yang Col. 6, lines 16-52 – use of NFC implicates a close physical relationship between the mobile device and the device 140 [ATM] and once paired, the mobile device and device 140 may communicate to enable a touchless transaction)
establishing a near-field communication (NFC) connection between the mobile device and the ATM; (See Yang Col. 6, lines 16-52 – use of NFC implicates a close physical relationship between the mobile device and the device 140 [ATM] and once paired, the mobile device and device 140 may communicate to enable a touchless transaction)
transmitting data from the mobile device to the ATM using the NFC connection; (See Yang Col. 6, lines 16-52 – once paired with the user interactive device, data may be exchanged with the user interactive device as part of a touchless transaction to communicate data payloads with an ATM)
validating an identity of a user of the mobile device using either the mobile device or the ATM; and (See Yang Col. 5, lines 35-48; Col. 7, lines 41-51 – user may be required to provide various authentication information to ensure that the user is associated with the user mobile device is authorized to use the mobile application)
dispensing cash by the ATM based on parameters including the data transmitted from the mobile device to the ATM using the NFC connection.(See Yang Col. 17, lines 26-41 – based on the payloads delivered by NFC taps from the user mobile device to the ATM, user can successfully receive their withdrawal in the amount desired and distributed in the currency denomination designated)
Yang discloses his invention as to systems and methods for contactless ATM transactions. (See Yang Abstract) Yang discloses that the innovations related to systems and methods for executing transactions, pre-staged or otherwise, through at least one “tap” of a mobile device against a user-interactive device (e.g., an ATM) where the touchless transactions may be conducted via NFC taps of a mobile device against the user interactive device. (See Yang Col.2, line 60-Col. 3, line 2) Further, Yang discloses that an ATM may be suggested or recommended based on the location of the user device and that a transaction can be pre-staged at a particular ATM and a particular location.
While Yang discloses the invention as described above, and discloses establishing a NFC connection between the mobile device and the ATM via tapping, thus indicative of close proximity, Yang does not clearly disclose that the close proximity is of less than five centimeters from a designated location on the ATM nor fully receiving navigation instructions to the ATM as claimed.
Dixon discloses his invention as to various embodiments generally relating to transacting in advance, more specifically, related to detecting a mobile computing device of a user within a proximity of a banking location; receiving, via the mobile application, an indication of a type of transaction to be conducted; and directing, via the mobile application, the user to an area of the banking location based on the type of transaction to complete the transaction. (See Dixon Abstract) Dixon discloses that a mapping module may be configured to provide a map of the recommended points of transaction and that the map may be user-customizable and may include directions to the points of transaction. (See Dixon Col. 11, lines 1-5)
Further, Dixon discloses a set of example operations for transacting in advance in accordance with embodiments of the invention. (See Dixon Col. 12, lines 62-65) In operation, a request for a financial transaction is received from a customer using a registered device, and in some examples, the customer may initiate and has completed a portion of a transaction, but to finish the transaction, the customer must physically go to a banking location such as an ATM or POS device. (See Dixon Col. 13, lines 11-28)
In operation, location information associated with the transaction completion location is determined and identified and the customer’s current location can be determined using any method known in the art. (See Dixon Col. 13, lines 29-37) For example, the customer’s device may be capable of determining the customer’s location, which may be communicated to the financial institution via an application, or the customer may provide a current location to the application and the customer may select a location from a map that is presented to the customer. (See Dixon Col. 13, lines 37-43)
The customer may want to complete the transaction at a location other than the customer’s current location and may indicate a general area, such as a zip code, or a particular area, such as an address where the customer would like to complete the transaction. (See Dixon Col. 13, lines 44-54) Ultimately, the location information regarding where the customer chooses to complete the transaction is used to identify banking locations capable of completing the transaction that are within a user-defined or predefined radius of the identified location and a list of the identified banking locations may be compiled. (See Dixon Col. 13, lines 54-60) The customer is provided with a recommendation of banking locations where the customer may complete the transaction and may include a list of banking locations, including a description of the banking locations, driving directions, maps, fees associated (if any), safety information, and current wait times based upon pending transactions from customers using a similar technology for each listed banking location. (See Dixon Col. 13, line 60-Col. 14, line 8, and Figures 12, 16-20)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have modified the systems and methods of contactless ATM transactions using taps of a mobile device against an user interactive device [ATM] as disclosed by Yang with the embodiments relating to transacting portions of financial transactions in advance using a mobile application and finishing transactions by physically going to a banking location such as an ATM and being provided a list of banking locations and directions to complete customer transactions as taught by Dixon in order to more quickly complete transactions at convenient banking locations.
While Yang in view of Dixon disclose the invention as claimed, they do not clearly further disclose that the close proximity is of less than five centimeters from a designated location on the ATM.
Naik discloses his invention as to methods and systems for performing pre-staged transaction, such as a cash withdrawal by a user or a user’s surrogate, employ a host server that receives pre-staged ATM transaction data via a first communication channel from a user’s mobile device and sends a first unique authentication token via a second communication channel to the user’s mobile device processor. (See Naik Abstract) An ATM processor receives entry of a pre-staged ATM transaction request and the first unique authentication token and sends the pre-staged ATM transaction and first unique authentication token to the host server for validation, which validates the received pre-staged ATM transaction input data and the entered first unique authentication token. (See Naik Abstract)
Naik also discloses that the NFC reader of the NFC enabled ATM may receive data transmitted from the user’s NFC-enabled mobile device when the user approaches the ATM and waves or taps the mobile device on or near the NFC reader of the ATM. (See Naik paras 30-31 – tapping on the NFC reader is distinguished from waving the mobile device and is noted to be on [less than five centimeters if the reader is on, not just waved above the reader] the NFC reader of the ATM [designated location on the ATM]
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have further modified the systems and methods of contactless ATM transactions using taps of a mobile device against an user interactive device [ATM] as disclosed by Yang in view of Dixon with the methods and systems for performing pre-staged transactions using NFC technology where the mobile device is tapped on a NFC reader of the ATM in order to impose additional control features on pre-staged ATM withdrawals by requiring more precise interaction.
Regarding Claim 14, this claim recites the limitations of Claim 13 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Yang discloses the following:
wherein the remote computing device runs a banking back-office system which manages account transactions performed by the digital banking systems app and the ATM. (See Yang Col. 9, lines 23-50)
Regarding Claim 15, this claim recites the limitations of Claim 13 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Yang discloses the following:
wherein, after the NFC connection between the mobile device and the ATM is used to establish another, non-NFC, communication channel between the mobile device and the ATM, where the other communication channel includes peer-to-peer WiFi or Bluetooth. (See Yang Col. 6, lines 16-52)
Regarding Claim 16, this claim recites the limitations of Claim 13 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Yang discloses the following:
wherein dispensing cash is only performed by the ATM when the user is physically present at the ATM as evidenced by the NFC connection to the mobile device. (See Yang Col. 17, lines 26-41 – based on the payloads delivered by NFC taps from the user mobile device to the ATM, user can successfully receive their withdrawal in the amount desired and distributed in the currency denomination designated)
Regarding Claim 17, this claim recites the limitations of Claim 13 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Yang discloses the following:
wherein the parameters include a specification of a client account with sufficient funds to cover the amount of the cash withdrawal, and validation that the identity of the user of the mobile device corresponds with the client account. (See Yang Col. 5, lines 35-48, Col. 7, lines 41-51, Col. 10, lines 39-66; Col. 14, lines 9-30 & 42-52; Col. 17, lines 26-41)
Regarding Claim 19, this claim recites the limitations of Claim 17 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Yang discloses the following:
wherein one or more of the parameters is entered directly into the ATM by the user, or is communicated to the ATM by the mobile device using a communication channel other than the NFC connectivity. (See Yang Col. 7, line 52 – Col. 8, line, 65; Col. 9, line 59-Col. 10, line 66)
Regarding Claim 20, this claim recites the limitations of Claim 13 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Yang discloses the following:
wherein validating an identity of a user of the mobile device includes using a validation method selected from a group comprising; entering a personal identification number (PIN) into either the mobile device or the ATM by the user, performing a facial recognition of the user by the mobile device, and performing a biometric scan of the user by the ATM. (See Yang Col.5, lines 35-48, Col. 7, lines 41-51, Col. 14,lines 9-30 – PIN, biometric scan, facial feature analysis)
Response to Arguments
Applicant's arguments filed May 13, 2026 have been fully considered as further detailed below.
As to the Claim Objections:
Applicant is thanked for the correction and the objection has been accordingly withdrawn. (See Applicant’s Arguments dated 05/13/2026, page 1)
As to the 101 Rejections:
There is currently no 101 rejection being applied. (Id. at pages 2-5)
As to the 103 Rejections:
As amended, the claims have required application of an additional piece of prior art as well as additional application of the prior art of record to meet the newly amended limitations as fully disclosed in the rejection in chief. (Id. at pages 5-6)
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.
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/AMBREEN A. ALLADIN/Primary Examiner, Art Unit 3691 July 25, 2026
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