NON-FINAL OFFICE ACTION
REISSUE OF U.S. PATENT NO. 10,621,572
TABLE OF CONTENTS
1. Acknowledgements 2
2. Reissue Procedural Reminders 3
3. Status of Claims 3
4. Priority and AIA Status 4
5. Response to Arguments 5
6. Specification 5
7. Broadest Reasonable Interpretation 6
8. CLAIM REJECTIONS – 35 USC § 251 8
9. Conclusion 9
Acknowledgements
This Office action addresses U.S. reissue application No. 18/659,083 (“Instant Application”).
Based upon a review of the Instant Application, the actual filing date is 09 May 2024 (“Actual Filing Date”).
The Instant Application is a reissue application of U.S. Patent No. 10,621,572 (“Patent Under Reissue” or “'572 Patent”) titled “ONLINE TRANSACTION SYSTEM.”
An application for the Patent Under Reissue was filed on 01 October 2019 (“Base Application Filing Date”) and assigned by the Office non-provisional U.S. patent application number 16/590,368 (“Base Application”) and issued on 14 April 2020 with claims 1–20 (“Originally Patented Claims”).
Reissue Procedural Reminders
Disclosure of other proceedings. Applicant is reminded of the continuing obligation under 37 CFR § 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the Patent Under Reissue is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Disclosure of material information. Applicant is further reminded of the continuing obligation under 37 CFR § 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These disclosure obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Manner of making amendments. Applicant is reminded that changes to the Instant Application must comply with 37 CFR § 1.173, such that all amendments are made in respect to the Patent Under Reissue as opposed to any prior changes entered in the Instant Application. All added material must be underlined, and all omitted material must be enclosed in brackets, in accordance with Rule 173. Applicant may submit an appendix to any response in which claims are marked up to show changes with respect to a previous set of claims, however, such claims should be clearly denoted as “not for entry.”
Status of Claims
Claims 1–20 are currently pending (“Pending Claims”) and currently examined (“Examined Claims”).
Regarding the Examined Claims and as a result of this Office action:
Claims 1–20 are rejected under 35 USC § 251.
Priority and AIA Status
Domestic Priority. Based upon a review of the Instant Application and the Patent Under Reissue, the Examiner finds the Instant Application contains a claim for benefit of domestic priority under 35 USC §§ 120 or 119(e) to parent application no. 16/056,920 (“Parent Application”).
Foreign Priority. Based upon a review of the Instant Application and the Patent Under Reissue, the Examiner finds the Instant Application contains a claim for benefit of foreign priority under 35 USC §§ 119(a)–(d) to GERMANY 10 2012 112 967.3 (“Foreign Application”). To the extent the disclosure of the Foreign Application supports the Pending Claims under 35 USC § 112, the supported claims receive benefit of a priority date of 21 December 2012, which is the filing date of the Foreign Application. Based upon a review of the Base Application and its prosecution history, the Examiner concludes that Applicants have not perfected their claim for foreign priority. See MPEP § 214.
AIA Status. Because the Instant Application does not contain a claim having an effective date before March 16, 2013, the America Invents Act First Inventor to File (“AIA -FITF”) provisions apply. In the event the determination of the status of the application as subject to AIA 35 USC 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.
Response to Arguments
Applicant’s arguments presented in the response filed 09 June 2025 have been fully considered but are moot in view of the new grounds of rejection.
Specification
The amendment filed 19 December 2024 is objected to under 35 USC § 132(a) and/or 35 USC § 251 because it introduces new matter into the disclosure. 35 USC § 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. 35 USC § 251 states that no new matter shall be introduced into the application for reissue. The added material which is not supported by the original disclosure is as follows:
“the POS system is configured to receive from the payment system an indication as to whether the unique digital code, mobile identifying code, and network identifying code transmitted from the POS system via the first digital network path matches the unique digital code, mobile identifying code, and network identifying code transmitted by the mobile device via the second digital network path;” and
“the POS system is further configured to offer clearance of the financial transaction when the indication indicates that the codes transmitted from the POS system match the codes transmitted by the mobile device.”
The amendment filed 09 June 2025 does not comply with 37 CFR § 1.173, and is therefore not entered. See MPEP § 1453.
Broadest Reasonable Interpretation
The Examiner hereby adopts the following interpretations under the broadest reasonable interpretation standard. In accordance with In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), the Examiner points to these other sources to support his interpretation of the claims. Additionally, these interpretations are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language. Finally, the following list is not intended to be exhaustive in any way:
clearance is “the process of transmitting, reconciling and, in some cases, confirming payment orders or security transfer instructions prior to settlement, possibly including the netting of instructions and the establishment of final positions for settlement. Sometimes the term is used (imprecisely) to include settlement.” A glossary of terms used in payments and settlement systems (2003; see Document U cited on page 1 of the PTOL-892 mailed 23 August 2024).
clearing and settlement is “The process of collecting the funds from the issuing bank and reimbursing the merchant is known as clearing and settlement. This process begins once the merchant submits transaction information, generally at the end of the day, to its merchant acquirer. The acquirer then transmits the transaction data to the appropriate payment network, which, in turn, directs the transaction to the respective card-issuing banks. The issuing banks charge their customers’ card account and remit funds through the network to the acquiring bank, less the issuing banks’ fees. The process is completed when the acquiring bank credits its merchant customer’s account, net of fees paid to the issuer, the payment network, and the acquirer. Typically, merchant accounts are funded between 24 and 72 hours after the purchase transaction.” The Merchant-Acquiring Side of the Payment Card Industry: Structure, Operations, and Challenges (2007; see Document X cited on page 1 of the PTOL-892 mailed 23 August 2024).
clearing is “[i]n banking and finance, […] all activities from the time a commitment is made for a transaction until it is settled. The process turns the promise of payment (for example, in the form of a checque or electronic payment request) into the actual movement of money from one account to another.” Wikipedia (2018; see Document U cited on page 2 of the PTOL-892 mailed 23 August 2024).
commitment is a “[p]romise or agreement to do something in the future, especially: 1. Act of assuming a financial obligation at a future date.” Wiktionary (2018; see Document V cited on page 2 of the PTOL-892 mailed 23 August 2024).
indication is “[s]omething that serves to indicate.” American Heritage Dictionary of the English Language, Fifth Edition, 2011.
indicate is “[t]o serve as a sign, symptom, or token of” or “[t]o state or express briefly.” American Heritage Dictionary of the English Language, Fifth Edition, 2011.
offer is “[t]o provide; [or] furnish.” American Heritage Dictionary of the English Language, Fifth Edition, 2011.
payment order is “an order or message requesting the transfer of funds (in the form of a monetary claim on a party) to the order of the payee. The order may relate either to a credit transfer or to a debit transfer. Also called payment instruction.” A glossary of terms used in payments and settlement systems (2003; see Document U cited on page 1 of the PTOL-892 mailed 23 August 2024).
settlement is “an act that discharges obligations in respect of funds or securities transfers between two or more parties.” A glossary of terms used in payments and settlement systems (2003; see Document U cited on page 1 of the PTOL-892 mailed 23 August 2024).
whether is “[u]sed to introduce alternative possibilities.” American Heritage Dictionary of the English Language, Fifth Edition, 2011.
vendor is “[o]ne that sells or vends something.” American Heritage Dictionary of the English Language, Fifth Edition, 2011.
CLAIM REJECTIONS – 35 USC § 251
Claims 1–20 are rejected under 35 USC § 251 as being broadened in a reissue application filed outside the two year statutory period.
A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.
Claim 1 is amended to recite, in relevant part, “receiving from the payment system an indication of an inquiry confirmation associated with a determination performed by the payment system as to whether the unique digital code, mobile identifying code, and network identifying code transmitted from the POS system via the first digital network path matches the unique digital code, mobile identifying code, and network identifying code transmitted by the mobile device via the second digital network path; and offering clearance of the financial transaction by the POS system by releasing information for payment of the financial transaction when the indication of the inquiry confirmation indicates that the codes transmitted from the POS system match the codes transmitted by the mobile device” (emphasis added).
However, the amendments noted above render claim 1 broader than the original claims because it contains within its scope a process which would not have infringed the original patent. In particular, practicing the method of amended claim 1, which includes receiving an indication of an inquiry confirmation, would not infringe original claim 1, which includes receiving an indication as to whether the unique digital code, mobile identifying code, and network identifying code transmitted from the POS system via the first digital network path matches the unique digital code, mobile identifying code, and network identifying code transmitted by the mobile device via the second digital network path. Moreover, practicing the method of amended claim 1, which includes offering clearance of the financial transaction by the POS system by releasing information for payment of the financial transaction when the indication of the inquiry confirmation indicates that the codes transmitted from the POS system match the codes transmitted by the mobile device, would not infringe original claim 1, which includes offering clearance of the financial transaction by the POS system when the indication indicates that the codes transmitted from the POS system match the codes transmitted by the mobile device. Claim 12 was amended similar to claim 1 and is rejected on the same basis. All other claims depend on either claim 1 or claim 12 and are thus also rejected on the same basis.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Jacob Coppola whose telephone number is 571-270-3922.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer can be reached at 571-272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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General inquiries may also be directed to the Central Reexamination Unit customer service line at (571) 272-7705.
/JACOB C. COPPOLA/Primary Examiner, Art Unit 3992
Conferees:
/C. Michelle Tarae/Reexamination Specialist, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
Prosecution Insights