DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is response to communication: response to original application filed on 06/11/2024.
Claims 1-20 are currently pending in this application.
The IDS filed on 06/11/2024 has been accepted.
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.
Claim 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No 12,045816 and claims 1-20 of US Patent No. 11,663,598. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of the current application are found in the claims of the parent patent. Below are examples of claim 1 from both the parent patents. The limitations from the current application are in bold. There are no new elements in the present application that do not appear in the parent patent. The dependent claims are verbatim. The other independents are rejected on the same basis of arguments provided here.
Patent No. 12,045,816 (18/137,922)
A method comprising: receiving, from a user device, a request for access to an account associated with a user; generating a list of merchants to authenticate the user device based on transaction data associated with the user; prompting the user device to provide user responses indicating, for each merchant of the list of merchants, whether the user transacted with a corresponding merchant; measuring response times for the user responses; determining, based on the response times, and based on response times for other users, average response times for the merchants on the list of merchants; and based on the average response time for a particular merchant exceeding a threshold, adding the particular merchant to a merchant blocklist.
Patent No. 11,663,598 (17/368,188)
A method comprising: receiving, from a user device, a request for access to an account associated with a user; retrieving transaction data associated with the user; generating a list of merchants to authenticate the user device based on the transaction data; retrieving a blocklist that indicates one or more merchants; filtering the list of merchants by removing any merchants indicated by the blocklist; prompting the user device to provide user responses indicating, for each merchant of the list of merchants, whether the user transacted with a corresponding merchant; receiving the user responses; measuring response times for the user responses; determining, based on the response times, and based on response times for other users, average response times for the merchants on the list of merchants; and based on the average response time for a particular merchant exceeding a threshold, adding the particular merchant to the blocklist.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the double patenting rejection above or if applicants file an approved terminal disclaimer.
The following is an examiner’s statement of reasons for allowance: Below is the closest prior art found.
Bhogavilli et al. US Patent Application Publication 2014/0096194 teaches a blacklist and utilizing delay for validation for security purposes (see paragraph 47 and throughout), but does not teach all the limitations of the claims.
Kirsch US Patent Application Publication 2004/0177120 teaches a blacklist by surveying users (see paragraph 27 and throughout), but does not teach all the limitations of the claims
Lopez et al. US Patent Application Publication 2018/0114242 teaches utilizing user feedback to determine blacklists in regards to merchants/etc, but does not teach utilizing hesitation in the feedback.
Although the references teach many elements of the claimed invention, the invention, as a whole, would not have been obvious over the prior art of record.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON KAI YIN GEE whose telephone number is (571)272-6431. The examiner can normally be reached on Monday-Friday 8:30-5:00 PST Pacific.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Farid Homayounmehr can be reached on (571) 272-3739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON K GEE/Primary Examiner, Art Unit 2495