DETAILED ACTION
This communication is responsive to the application # 18/732,832 filed on June 04, 2024. Claims 1-20 are pending and are directed toward SYSTEMS AND METHODS FOR PHONE-BASED CARD ACTIVATION.
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 . 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.
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.
Claims 11-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: The claim 11 does fall into one of the four statutory categories of method claims. Nevertheless, the claims still is/are considered as abstract idea for the following prongs and reasons.
Step 2A: Prong 1: The limitation of claim 11 conveys a process that, under its broadest reasonable interpretation, covers performance of the limitation in the human mind and /or with pen and paper without a generic computer. Except for words “performed by a contactless card comprising a processor and a memory”, which is interpreted by Examiner as ‘in a computing environment’, there is nothing in the claim element precludes the step from practically being performed in human mind and/or with pen and paper. The claimed concept is akin to, for example, obtaining various information, in any office and can also be perceived to be done manually by human in an orderly fashion.
Dependent claims 12 – 14, which in turn convey obtaining different phone numbers etc. is/are mere structural addendums and are other steps that could be performed by human manually with/without need for a computer. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in a human mind but for the recitation of generic computer components, then it falls within the “mental processes” grouping of abstract ideas and can be done manually. Accordingly, the claim recites an abstract idea.
Prong 2: This judicial exception is not integrated into a practical application. In particular, the claims do not recite any additional element to perform beyond routine steps as recited in claims 11-14. The steps are recited at a high-level of generality (i.e., as generic terms performing generic computer functions such that it amounts no more than mere instructions to apply the exception using generic computer components). Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, the claims are directed to an abstract idea.
Step 2B: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, as recited in claims 11-14 amounts to no more than mere instructions to apply the exception using generic computer terms. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. The claims are not patent eligible. The claims are not patent eligible.
Claim Rejections - 35 USC § 103
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.
Claims 1-7, 9, 11, 14, 15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hendrick (US 2017/0289127, Pub. Date: Oct. 5, 2017), in view of Jain et al. (US 2003/0147519, Pub. Date: Aug. 7, 2003), hereinafter referred to as Hendrick and Jain.
As per claim 1, Hendrick teaches a contactless card, comprising:
a processor; and a memory containing an applet, wherein the applet (Hendrick, FIG.2) is configured to:
retrieve a the PAN, CVV, or other identification number may be a constantly changing number that is synchronized, but not directly linked to a number generating system on a card issuer's computer system. This constantly changing number may be stored in/on card memory, then displayed on a card's display screen, Hendrick, [0016]),
Hendric teaches other identification number, and Jain teaches a phone number (Dynamic Number, Jain, Figure 1)
generate data configured to activate the contactless card (Such activation or authentication may take place upon facial recognition, as with a small camera in/on the card, or upon both facial recognition and fingerprint recognition or entering a Personal Identification Number ("PIN") passcode utilizing, e.g. an on-board nine-number numeric keypad. Hendrick, [0002]), the data including the retrieved phone number (For example, as shown in FIG. 1, the dynamic number user submits the corresponding routable number to which the dynamic number should be mapped. In addition, the dynamic number user may configure other parameters associated with the dynamic number, such as the lifetime of the dynamic number (which may be specified in terms of time, maximum number of calls, maximum number of distinct callers, maximum cost for using the service, or other suitable metric), the phone numbers of the parties allowed to call the dynamic number or alternate instructions if the routable number is busy. The DTNS provider can provide other configuration parameters useful to dynamic number users. Jain, [0022]), and
receive an instruction indicating activation of the contactless card (The dynamic number user provides the dynamic number to the customer, including pertinent instructions, such as, a PIN; the time period for which the dynamic number is valid, etc. (Jain, [0024]).
Hendrick in view of Jain are analogous art to the claimed invention, because they are from a similar field of endeavor of systems, components and methodologies for providing secure communication between computer systems. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Hendrick in view of Jain. This would have been desirable because in conjunction with routing the telephone call to the correct CSR, the routing system can perform other value-added services. For example, the system could use the information returned from the database query to determine the customer's identity (Jain, [0075]).
As per claim 2, Hendrick in view of Jain teaches the contactless card of claim 1, wherein the data is configured to initiate a phone call after entry of the contactless card into a communication field of a client device (In some embodiments, a contactless transaction card, e.g. a banking/credit/debit card, bearing an RFID or other wireless chip, is moved near to an RFID or other wireless reader to read the card's data. Hendrick, [0010], see also This CVV number or additional/other card verification/identification number may be used for transactions over the phone or the internet to provide card verification. Hendrick, [0012]).
As per claim 3, Hendrick in view of Jain teaches the contactless card of claim 2, wherein the client device comprises at least one selected from the group of a mobile device and a point of sale (POS) device (A smartcard that can connect, wirelessly or by contact, to a reader or to a computing device, mobile telephone or cellular telephone, said card permitting the flow of data to said card, from said card, or both, when connected to said reader or to said computing device, Hendrick, Claim 1).
As per claim 4, Hendrick in view of Jain teaches the contactless card of claim 3, wherein the POS device comprises at least one selected from the group of a kiosk, a checkout register, and a payment station (These new cards provide added security at a point of sale in a store or other place of business, as the security identification number is displayed following a biometric match of the user to the card. A merchant, for instance, may, in some cases, enter this identification number on its terminal/connected register at the time of making a transaction. Hendrick, [0015]).
As per claim 5, Hendrick in view of Jain teaches the contactless card of claim 2, wherein the instruction is sent by the client device (As shown in FIG. 5, when the customer clicks the link, the encrypted number is sent to the softswitch. The softswitch, based on the instructions it received with the encrypted number, delivers it to a third-party application server. Jain, [0052]).
Hendrick in view of Jain are analogous art to the claimed invention, because they are from a similar field of endeavor of systems, components and methodologies for providing secure communication between computer systems. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Hendrick in view of Jain. This would have been desirable because in conjunction with routing the telephone call to the correct CSR, the routing system can perform other value-added services. For example, the system could use the information returned from the database query to determine the customer's identity (Jain, [0075]).
As per claim 6, Hendrick in view of Jain teaches the contactless card of claim 1, wherein the data further includes at least one selected from the group of an identification token, a card verification value (CVV), and a one-time password (OTP) (To mitigate fraud with such payment cards, the CVV, a PAN, a OTP (one time password), or other card identification number may be stored in memory on the card, and displayed, in digital form or otherwise, on a display screen, Hendrick, [0014]).
As per claim 7, Hendrick in view of Jain teaches the contactless card of claim 6, wherein the applet is further configured to generate the OTP (The CID, PAN or OTP is usually an unchanging number, but may a constantly changing number that is synchronized, but not directly linked to, a number generating system on a card issuer's computer system. This constantly changing number may be displayed on a card's display screen, for a limited time or otherwise, Hendrick, [0014]).
Claims 9, 11, 14, 15, and 17-20 have limitations similar to those treated in the above rejection, and are met by the references as discussed above, and are rejected for the same reasons of obviousness as used above.
Claims 8 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Hendrick (US 2017/0289127, Pub. Date: Oct. 5, 2017), in view of Jain et al. (US 2003/0147519, Pub. Date: Aug. 7, 2003), in view of WURMFELD et al. (US 2016/0307082, Pub. Date: Oct. 20, 2016), hereinafter referred to as Hendrick, Jain and WURMFELD.
As per claim 8, Hendrick in view of Jain teaches the contactless card of claim 7, but does not teach a private key, WURMFELD however teaches wherein: the memory further stores a private key, and the applet is further configured to encrypt the OTP using the private key (fully pre-loaded and/or partially pre-loaded data may also include keys (e.g., public/private key pairs, private key pairs, and/or the like) that may be used by an EMV circuit to execute transactions using the EMV processor on the card. WURMFELD, [0151]).
Hendrick in view of Jain in view of WURMFELD are analogous art to the claimed invention, because they are from a similar field of endeavor of systems, components and methodologies for providing secure communication between computer systems. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Hendrick in view of Jain in view of WURMFELD. This would have been desirable because upon connection between a PoS terminal 1210 and a dynamic transaction card 1220, using for example EMV processor 1230, data may be read and encrypted using a private key stored within EMV processor 1230. The encrypted data may be transmitted along with plaintext data from a PoS terminal 1210 to an acquirer, a payment network, and/or an issuer where the encrypted data may be decrypted. (WURMFELD, [0181]).
Claim 16 has limitations similar to those treated in the above rejection, and are met by the references as discussed above, and are rejected for the same reasons of obviousness as used above.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hendrick (US 2017/0289127, Pub. Date: Oct. 5, 2017), in view of Jain et al. (US 2003/0147519, Pub. Date: Aug. 7, 2003), in view of Gookin (HOW TO ADD PAUSES WHEN YOU DIAL A NUMBER ON THE SAMSUNG GALAXY NOTE 3, 6 pages, 2016-03-26), hereinafter referred to as Hendrick, Jain and Gookin.
As per claim 10, Hendrick in view of Jain teaches the contactless card of claim 9, but does not teach a comma, Gookin however teaches wherein the character comprises a comma corresponding to a pause associated with a phone call (Choose Add 2-Sec Pause to insert a 2-second pause, or choose Add Wait to create a prompt into the phone number that’s dialed. The Add 2-Sec Pause command inserts the comma (,) character into the number. When the phone dials the comma, it waits for two seconds and then dials the rest of the number. Gookin, page 3).
Hendrick in view of Jain in view of Gookin are analogous art to the claimed invention, because they are from a similar field of endeavor of systems, components and methodologies for providing secure communication between computer systems. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Hendrick in view of Jain in view of Gookin. This would have been desirable because unlike on the ancient telephone, dialing a number on your Samsung Galaxy Note 3 isn’t an interactive process: You type the number and then touch the green Phone icon to dial. The number is spewed into the phone system like water from a fire hose. When you need to pause the number as it’s dialed, you must know the secret (Gookin, page 2).
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Hendrick (US 2017/0289127, Pub. Date: Oct. 5, 2017), in view of Jain et al. (US 2003/0147519, Pub. Date: Aug. 7, 2003), in view of Chen et al. (US 2003/0022698, Pub. Date: Jan. 30, 2003), hereinafter referred to as Hendrick, Jain and Chen.
As per claim 12, Hendrick in view of Jain teaches the method of claim 11, wherein:
the pre-configured list comprises a plurality of phone numbers (Jain, [0044]), but does not teach international phone numbers, Chen however teaches the plurality of phone numbers includes at least one United States-based phone number and at least one non-United States-based phone number (For example in an international roaming, a successful cellular phone call is made possible only after a calling party knows the international access code of a called party in advance, i.e., calling party has to dial international access code and the called party's telephone number (including national code, area code and number) sequentially. Chen, [0002]).
Hendrick in view of Jain in view of Chen are analogous art to the claimed invention, because they are from a similar field of endeavor of systems, components and methodologies for providing secure communication between computer systems. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Hendrick in view of Jain in view of Chen. This would have been desirable because it is desirable to provide a novel cellular phone which is capable of performing a dialing method for dynamically simplifying an international call in a convenient effective manner in order to overcome the above drawbacks of prior art (Chen, [0002]).
As per claim 13, Hendrick in view of Jain in view of Chen teaches the method of claim 12, wherein the at least one non-United States-based phone number includes a country code (The cellular phone comprises a database in a memory 11 thereof having a conversion table for storing system codes of major network companies worldwide and their international access codes, and a phone record for storing telephone numbers, each including international access code, national code, area code and number, after being dialed by a user of cellular phone. Chen, [0007]).
Hendrick in view of Jain in view of Chen are analogous art to the claimed invention, because they are from a similar field of endeavor of systems, components and methodologies for providing secure communication between computer systems. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Hendrick in view of Jain in view of Chen. This would have been desirable because it is desirable to provide a novel cellular phone which is capable of performing a dialing method for dynamically simplifying an international call in a convenient effective manner in order to overcome the above drawbacks of prior art (Chen, [0002]).
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of US patent No. 11,341,480. Although the conflicting claims are not identical, they are not patentably distinct from each other because all elements of claims 1-20 of the instant application correspond to elements of claims 1-20 of US patent No. 11,341,480. The above claims of the present application would have been obvious over claims 1-20 of US patent No. 11,341,480 because each element of the claims of the present application is anticipated by the claims 1-20 of US patent No. 11,341,480 and as such are unpatentable for obviousness-type double patenting (In re Goodman (CAFC) 29 USPQ2D 2010 (12/3/1993)).
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of US patent No. 12,154,097. Although the conflicting claims are not identical, they are not patentably distinct from each other because all elements of claims 1-20 of the instant application correspond to elements of claims 1-20 of US patent No. 12,154,097. The above claims of the present application would have been obvious over claims 1-20 of US patent No. 12,154,097 because each element of the claims of the present application is anticipated by the claims 1-20 of US patent No. 12,154,097 and as such are unpatentable for obviousness-type double patenting (In re Goodman (CAFC) 29 USPQ2D 2010 (12/3/1993)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLEG KORSAK whose telephone number is (571)270-1938. The examiner can normally be reached on 5:00 AM- 4:00 PM.
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/OLEG KORSAK/
Primary Examiner, Art Unit 2492