DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 24, 2026 has been entered.
Status of the Claims
1. This action is in reply to the Request for Continued Examination dated July 24, 2026.
2. Claims 1-9 were preliminarily amended on July 2, 2024.
3. Claims 1 and 6-15 are currently pending and have been examined.
4. Claims 1 and 6-13 have been amended.
5. Claims 2-5 have been canceled.
6. Claims 14-15 have been newly added.
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 Interpretation – Broadest Reasonable Interpretation
8. In determining patentability of an invention over the prior art, all claim limitations have been considered and interpreted using the “broadest reasonable interpretation consistent with the specification during the examination of a patent application since the applicant may then amend his claims.” See In re Prater and Wei, 162 USPQ 541, 550 (CCPA 1969); MPEP § 2111. Applicant always has the opportunity to amend the claims during prosecution, and broad interpretation by the examiner reduces the possibility that the claim, once issued, will be interpreted more broadly than is justified. See In re Prater, 162 USPQ 541, 550-51 (CCPA 1969); MPEP § 2111. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 26 USPQ2d 1057 (Fed. Cir. 1993). See also MPEP 2173.05(q) All claim limitations have been considered. Additionally, all words in the claims have been considered in judging the patentability of the claims against the prior art. See MPEP 2143.03.
Claim limitations that contain statement(s) such as “if, may, might, can, could”, are treated as containing optional language. As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted.
Claim limitations that contain statement(s) such as “wherein, whereby”, that fail to further define the steps or acts to be performed in method claims or the discrete physical structure required of system claims.
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. see MPEP § 2103(I)(C); In re Johnson, 77 USPQ2d 1788 (Fed Cir 2006). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e. the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
The subject matter of a properly construed claim is defined by the terms that limit its scope. It is this subject matter that must be examined.
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. see MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. see MPEP §2013(I)(C).
Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009). See MPEP 2111.04, 2143.03.
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art. In other words, if the prior art structure is capable of performing the intended use, then it meets the claim.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble (MPEP 2111.02);
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby” (MPEP 2111.04)
Contingent limitations (MPEP 2111.04)
Printed matter (MPEP 2111.05) and
Functional language associated with a claim term (MPEP 2181)
Examiner notes that during examination, “claims … are to be given their broadest reasonable interpretation consistent with the specification, and … claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” See In re Bond, 15 USPQ 1566, 1568 (Fed. Cir. 1990), citing In re Sneed, 218 USPQ 385, 388 (Fed. Cir. 1983). However, "in examining the specification for proper context, [the examiner] will not at any time import limitations from the specification into the claims". See CollegeNet, Inc. v. ApplyYourself, Inc., 75 USPQ2d 1733, 1738 (Fed. Cir. 2005). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984), citing In re Prater, 162 USPQ 541, 550 (CCPA 1969).
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following language is interpreted as not further limiting the scope of the claimed invention.
The preamble of the instant claim 1 recites "[a] method for remotely taking control of a payment terminal, comprising the following steps:”
The preamble of the instant claim 8 recites “[a] payment terminal configured to allow a remote take-over of control of said payment terminal, comprising:
In general, a preamble limits the invention if it recites essential structure or steps, or if it is "necessary to give life, meaning, and vitality" to the claims. Pitney Bowes, Inc. v. Hewlett-Packard Co. 51 USPQ2d 1161 (Fed. Cir. 1999), Catalina Marketing International Inc. v. Coolsavings.com Inc., 62 USPQ2d 1781 (Fed. Cir. 2002). Conversely, where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or an intended use for the invention, the preamble is not a claim limitation given patentable weight. Rowe v. Dror, 42 USPQ2d 1550 (Fed. Cir. 1997); Catalina Marketing International Inc. v. Coolsavings.com Inc., 62 USPQ2d 1781 (Fed. Cir. 2002); Bell Communications Research, Inc. v. Vitalink Communications Corp., 34 USPQ2d 1816 (Fed. Cir. 1995) If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) See MPEP 2111.02
In the instant case, “for remotely taking control of a payment terminal” as recited in the preamble of Claim 1 and “to allow a remote take-over of control of said payment terminal” as recited in the preamble of Claim 8 only states a purpose and/or the intended use of the invention and accordingly is not being assigned any patentable weight.
Further, the following italicized limitations are stating a purpose and/or intended use of the invention and accordingly are not being given further weight.
As in Claim 1 (and similarly, by reference in Claim 9):
checking for and confirming a presence, within a secure memory of the payment terminal, of at least one file data structure representative of restrictions to be applied to the remote take-over of control, when the remote take-over of control of the payment terminal becomes effective;
exchanging signalling data with a connection server to initialize a point-to-point connection between a remote terminal and the payment terminal, the exchange comprising:
exchanging self-signed certificate seals between the dedicated application of the payment terminal and a client module of the remote terminal to establish trust between the payment terminal and the remote terminal during the point-to-point connection;
a media stream comprising one continuous video broadcast stream of information displayed on a screen of the payment terminal transported using a first protocol based on a transport layer security protocol to guarantee confidentiality and authenticity of data exchanged via the media stream;
a control stream comprising one stream for receipt of at least one command from the remote terminal transported using a second protocol based on a transport layer security protocol to guarantee confidentiality and authenticity of data exchanged via the control stream;
As in Claim 8:
the dedicated application configured to implement security measures restricting the remote take-over of control of the payment terminal, comprising deactivating, within the payment terminal, each reader of a payment device, the readers including a smart card reader, a magnetic stripe card reader, an NFC reader, or a QR-code reader, such that the payment terminal cannot be used to implement a payment transaction during the remote take-over of control, and configured to check for and confirm a presence, within a secure memory of the payment terminal, of at least one file data structure representative of restrictions to be applied to the remote take-over of control when the remote take-over of control of the payment terminal becomes effective;
wherein the payment terminal is configured to exchange signalling data with a connection server to initialize a point-to-point connection between the remote terminal and the payment terminal, the exchange comprising:
exchanging self-signed certificates seals between the dedicated application of the payment terminal and a client module of the remote terminal to establish trust between the payment terminal and the remote terminal during the point-to-point connection;
a media stream comprising one continuous video broadcast stream of information displayed on a screen of the payment terminal transported using a first protocol based on a transport layer security protocol to guarantee confidentiality and authenticity of data exchanged via the media stream;
a control stream comprising one stream for the receipt of at least one command from the remote terminal transported using a second protocol based on a transport layer security protocol to guarantee confidentiality and authenticity of data exchanged via the control stream;
Claim Rejections - 35 USC § 112
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. Claim 10 is 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.
Regarding Claim 10, this claim is dependent on Claim 1 which currently recites in part “…comprising deactivating, within the payment terminal, each reader of a payment device, the readers including a smart card reader, a magnetic stripe card reader, an NFC reader, or a QR-code reader, such that the payment terminal cannot be used to implement a payment transaction during the remote take-over of control…”. Claim 10, which directly depends on Claim 1 now recites “further comprising reactivating the reader when the remote take-over of control is ended”.
As currently recited, the claim only requires one reader to be reactivated when the remote take-over of control is ended, which is incongruent and presents a mismatch in scope with the recitation of “each reader” in the independent claim, followed by a list of readers. The claims should be commensurate in scope. Examiner suggests clarifying the claim to recite reactivating each reader when the remote take-over of control is ended.
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.
10. Claim 9 is rejected under 35 U.S.C. §101 because in order to comply with §101, a computer program product claim must recite that the computer program product comprises a non-transitory computer readable medium having program instructions (or code) embodied thereon and said instructions are configured to control a computer to perform specific functional steps. The claim must then recite the specific functional steps performed by execution of the instructions contained on the computer-readable medium by the computer, rather than reciting the code or software itself (i.e. software per se is not patentable). A computer program product, when properly claimed, describes the method steps performed when executed by a computer system, not the code or software itself.
Here, the claim recites a computer program product including program instructions stored on a non-transitory computer-readable medium that, when by a microprocessor executes the method according to claim 1. While Applicant now has claimed that the program instructions are stored on a non-transitory computer-readable medium, the claim is anomalous in that the claim recites “when by a microprocessor executes the method according to claim 1” which does not clearly indicate that the stored program instructions are being executed by the processor to perform the steps of the method or if there is an alternate or intermediate step that executes the method as the link to the program instructions being executed by the processor is not clearly recited. Clarification and correction is required.
Prior Art of Record Not Currently Applied
Gonsalves et al. (US PG Pub. 2016/0029216) (“Gonsalves”) – disclosing peer to peer remote control management between a helper and beneficiary mobile device. (See Gonsalves Abstract) A trust relationship is established between the helper and beneficiary mobile devices by performing mutual authentication. (See Gonsalves Abstract)
Mayer et al. (US PG Pub. 2016/0155134) (“Mayer”) – disclosing a method for detecting a disconnection of a main connector of an electronic payment terminal. (See Mayer Abstract)
Bernardi (US Patent 11,100,197) – discloses Secure Real Time Communication Service for audio and video streaming communications and content sharing that securely connects multiple users using a “push-button” WebRTC chat app connection over a P2P network. (See Bernardi Abstract)
Response to Arguments
Applicant's arguments filed July 24, 2026 have been fully considered as disclosed below.
As to the 112(a) Rejections:
Applicant is thanked for the corrections made to overcome the previously raised 112(a) issues. (See Applicant Arguments dated 07/24/2026, pages 9-10) The 112(a) has accordingly been withdrawn.
As to the 112(b) Rejections:
Applicant is thanked for the corrections made. While Applicant did resolve the recitation in claim 1 to recite that “each reader” is deactivated, the additional issue in Claim 10 that was noted was not resolved, as seen in the rejection in chief. (Id. at pages 10-11)
As to the 101 Rejections:
As amended, there is currently no Alice 101 rejection being applied, however there is still an outstanding 101 rejection as to Claim 9 as fully disclosed in the rejection in chief. (Id. at pages 12-15)
As to the 103 Rejections:
There is currently no prior art rejection being applied.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMBREEN A. ALLADIN whose telephone number is (571)270-3533. The examiner can normally be reached Monday - Friday 9-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas can be reached at 571-270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMBREEN A. ALLADIN/Primary Examiner, Art Unit 3691 September 19, 2026
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