DETAILED ACTION
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 .
Continuation Application
This Application is a continuation of US Application No. 14/471,930; 16/213,901 ;17/883,405 filed on 08/28/2014; 12/07/2018; and 08/08/2022 now patent US 11,574,300 B1; US 11,410,161 B1; and US 12,056,688 B1 (“Parent Application”). See MPEP § 201.07. In accordance with MPEP § 609.02 (II)(A)(2) and MPEP § 2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also, in accordance with MPEP § 2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) is/are reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicant(s) desires the information to be printed on a patent issuing from this application. See MPEP § 609.02 (II)(A)(2).
Information Disclosure Statement
The Information Disclosure Statement filed 07/23/2024 was considered. An initialed copy of the Form PTO-1449 is enclosed herewith.
Election/Restrictions
Applicant’s election without traverse of claims 1-7 in the reply filed on 10/20/2025 is acknowledged.
Claims 8-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subcombinations, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/20/2025.
Acknowledgements
This Office Action is in response to the amendment received on 07/02/2024.
Claims 8-20 were withdrawn.
Claims 1-7 are pending.
Claims 1-7 were examined.
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.
Claims 1 and 3-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-6 of U.S. Patent No. 11,410,161 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because the current Application claims an embodiment which is broader than the patented claims.
Current Application 18/762,528
US Patent 11,410,161 B1
1. A mobile device comprising: a processing circuit comprising a processor coupled to a memory storing a client application, the processing circuit configured to perform operations comprising:
enabling access to the client application during a first session based on a first device token identifying the first session and the mobile device and a customer token identifying a user;
receiving a second device token from a computing system during the first session, the second device token identifying the mobile device and a second session;
receiving, by the client application during the first session, an identifier from the computing system, the identifier associated with the user and generated by the computing system in response to a request; and
receiving, by the client application during the first session and based on a comparison of the received identifier with an existing identifier, an approval for the request.
3.The mobile device of claim 1, wherein: the identifier is a tokenized card number comprising a plurality of digits; at least four digits of the tokenized card number match an actual credit card number of the user; and at least one of the plurality of digits other than the at least four digits do not match the actual credit card number of the user.
4.The mobile device of claim 3, wherein the tokenized card number comprises a first issuer identification number that identifies the computing system.
5.The mobile device of claim 4, wherein the actual credit card number comprises a second issuer identification number different from the first issuer identification number of the tokenized card number.
6.The mobile device of claim 1, wherein the mobile device communicates with a recipient computer system via a network, the operations further comprising: transmitting, by the mobile device via the network, the identifier to the recipient computer system.
1. A mobile device comprising: a processing circuit comprising a processor coupled to a memory storing a mobile wallet client application, the processing circuit configured to perform operations comprising:
receiving a device token and a customer token from a mobile wallet computer system, the device token structured to identify the mobile device and a first mobile wallet session to the mobile wallet computer system, and the customer token structured to identify a user to the mobile wallet computer system;
receiving an indication to access the mobile wallet client application associated with the mobile wallet computer system from the user;
transmitting the device token and the customer token to the mobile wallet computer system based on receiving the indication; receiving, from the mobile wallet computer system, an authorization decision to enable access to the mobile wallet client application based at least in part on the transmitted device token and customer token;
enabling, by the mobile wallet client application, access to the mobile wallet client application during the first mobile wallet session based on the authorization decision;
receiving a second device token from the mobile wallet computer system, the second device token structured to identify the mobile device and a second mobile wallet session;
transmitting, by the mobile wallet client application during the first mobile wallet session, a fund request to the mobile wallet computer system in response to receiving an input from the user regarding a transaction between the user and a merchant;
receiving, by the mobile wallet client application during the first mobile wallet session, an identification number from the mobile wallet computer system, the identification number associated with a payment account for the transaction, the identification number generated by the mobile wallet computer system in response to receiving the fund request from the mobile device;
receiving, by the mobile wallet client application via the generated user interface during the first mobile wallet session, a security code from the user;
generating, by the mobile device during the first mobile wallet session, an optical code comprising the identification number;
providing, by the mobile wallet client application via the generated user interface displayed on the mobile device during the first mobile wallet session, the optical code to the merchant; and
receiving, by the mobile wallet client application via the mobile device during the first mobile wallet session, an approval from a card network computer system for the transaction.
3. The mobile device of claim 1, wherein: the identification number is a tokenized card number comprising a plurality of digits; at least four digits of the tokenized card number match an actual credit card number of the user; and at least one of the plurality of digits other than the at least four digits do not match the actual credit card number of the user.
4. The mobile device of claim 3, wherein the tokenized card number comprises a first issuer identification number that identifies the mobile wallet computer system.
5. The mobile device of claim 4, wherein the actual credit card number comprises a second issuer identification number different from the first issuer identification number of the tokenized card number.
6. The mobile device of claim 1, wherein the mobile device communicates with a merchant computer system via a network, the operations further comprising: transmitting, by the mobile device via the network, the identification number to the merchant computer system.
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 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
According to MPEP 2106 II, It is essential that the broadest reasonable interpretation (BRI) of the claim be established prior to examining a claim for eligibility. Further, MPEP 2103 I C establishes that the subject matter of a properly construed claim is defined by the terms that limit the scope of the claim when given their broadest reasonable interpretation. It is this subject matter that must be examined. Regarding the independent claims, claim 1 recites “ first device token identifying the first session and the mobile device”; “ a customer token identifying a user”; “the identifier associated with the user and generated by the computing system in response to a request”, language directed to non-functional descriptive material. See MPEP 2111.05.
In the instant case, claims 1-7 are directed to a mobile device. Therefore, these claims fall within the four statutory categories of invention. Specifically, the language of the claims that recite an abstract idea are marked in bold below:
a. “enabling access to the client application during a first session based on a first device token identifying the first session and the mobile device and a customer token identifying a user”;b. “receiving a second device token from a computing system during the first session, the second device token identifying the mobile device and a second session”;c. “receiving, by the client application during the first session, an identifier from the computing system, the identifier associated with the user and generated by the computing system in response to a request”; andd. “receiving, by the client application during the first session and based on a comparison of the received identifier with an existing identifier, an approval for the request.”
Therefore, the portions highlighted in bold above recite access control and information retrieval, which is an abstract idea grouped within the certain methods of organizing human activity and mental processes grouping of abstract ideas in prong one of step 2A of the Alice/Mayo two-part test (see MPEP 2106.04). The claims are grouped within certain methods of organizing human activity because the steps recited describe the commercial or legal interaction of allowing access to a resource. Additionally, the claims are also grouped within mental processes because the steps recited describe collecting information, analyzing it, and displaying certain results of the collection and analysis, which is a concept that can be performed in the human mind or by pen and paper. In situations like this where a series of steps recite judicial exceptions, examiners should combine all recited judicial exceptions and treat the claim as containing a single judicial exception for purposes of further eligibility analysis. See MPEP 2106.04 and 2106.05(II). Thus, the language identified in the certain methods of organizing human activity and mental processes groupings were considered as a single abstract idea. Accordingly, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application. Specifically, with respect to using mobile device, processing circuit, memory/client application to perform the recited steps/functions, these additional elements performs the steps or functions such as: “enabling access…”, “receiving… token…”, “receiving… identifier…”, “receiving… approval…”. These additional elements are recited at a high-level of generality such that it represents no more than mere instructions to apply the exception using a generic computer component, which only serves to use computers as a tool to perform the abstract idea. Therefore, these elements do not integrate the abstract idea into a practical application because they require no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional element of a computing system amounts to generally linking the use of the judicial exception to a particular technological environment or field of use. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, following the analysis of step 2A, prong two, the claims are still directed to an abstract idea.
With respect to step 2B of the analysis, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to the integration of the abstract idea into a practical application, the claim recites additional computer elements, such as mobile device, processing circuit, memory/client application, computing system. The mobile device, processing circuit, memory/client application perform the steps/functions of “enabling access…”, “receiving… token…”, “receiving… identifier…”, “receiving… approval…”, and amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept beyond the abstract idea of access control and information retrieval. The additional element of a computing system amounts to generally linking the use of the judicial exception to a particular technological environment or field of use. As discussed above, taking the claim elements separately, these additional elements perform the steps or functions that correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of access control and information retrieval. Therefore, the claims are not eligible.
Dependent claims 2-7 further recite the following additional language, in which elements which merely further define the identified abstract idea are marked in bold below:
e) wherein the approval for the request is provided via a user interface displayed on the mobile device during the first session; wherein the user interface includes an optical code, the operations further comprising: providing, by the mobile device via the user interface, the optical code to a code scanner of a recipient.
f) wherein: the identifier is a tokenized card number comprising a plurality of digits; at least four digits of the tokenized card number match an actual credit card number of the user; and at least one of the plurality of digits other than the at least four digits do not match the actual credit card number of the user. g) wherein the tokenized card number comprises a first issuer identification number that identifies the computing system.
h) wherein the actual credit card number comprises a second issuer identification number different from the first issuer identification number of the tokenized card number.
i) wherein the mobile device communicates with a recipient computer system via a network, the operations further comprising: transmitting, by the mobile device via the network, the identifier to the recipient computer system. j) wherein the mobile device communicates with a recipient computer system via a near-field communication (NFC), the operations further comprising: generating, by the mobile device during the first session, a code including the identifier; and transmitting, by the mobile device via NFC, the code to the recipient computer system.
Examiner notes that, for elements recited in the dependent claims which were previously analyzed as additional elements of the independent claims above (i.e. mobile device, processing circuit, memory), the assessment of these elements under step 2A and step 2B for the dependent claims is inherited from the analysis of the independent claims and omitted for brevity, unless noted by Examiner below.
With respect to claim 2, the claim includes language directed to non-functional descriptive material by describing what the approval is and what the user interface "includes". Those statements are insufficient to significantly alter the eligibility analysis. Further, the claim recites item e) above, which represents the additional elements/functions of the request being provided via a user interface displayed on the mobile device during the first session, and providing… code… With respect to “the request being provided via a user interface displayed on the mobile device during the first session, this language is directed to extra-solution activity. With respect to providing… code…, this language further elaborates the abstract idea of access control and information retrieval identified in the analysis of independent claim 1. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer. Examiner notes the additional elements/functions are part of the mental process of collecting information, analyzing it, and displaying certain results of the collection and analysis. Examiner further notes that “providing, by the mobile device via the user interface, the optical code to a code scanner of a recipient” is the equivalent of displaying a code with the intended use of being displayed “to a code scanner of a recipient”. In other words, the BRI of the claims is directed to functions performed by the mobile device and does not encompass actions performed by a device outside of the scope of the claims.
With respect to the eligibility analysis of claim 6, the claim recites item i) above, which introduces the additional element of “the mobile device communicates with a recipient computer system via a network”, which amounts to insignificant extra-solution activity. The claim further introduces the additional elements/functions of transmitting… identifier…. This language further elaborates the abstract idea of access control and information retrieval identified in the analysis of independent claim 1. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer. Examiner notes the additional elements/functions are part of the mental process of collecting information, analyzing it, and displaying certain results of the collection and analysis.
With respect to the eligibility analysis of claim 7, the claim recites item j) above, which introduces the language “the mobile device communicates with a recipient computer system”, which amounts to insignificant extra-solution activity. In addition, the recitation of ”via a near-field communication (NFC)” in the claim does not go beyond generally linking the use of the judicial exception to a particular technological environment. The claim further introduces the additional elements/functions of generating… and… transmitting… code… This language further elaborates the abstract idea of access control and information retrieval identified in the analysis of independent claim 1. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer. Examiner notes the additional elements/functions are part of the mental process of collecting information, analyzing it, and displaying certain results of the collection and analysis.
Therefore, while the additional language e), i), and j) of dependent claims 2, 6, and 7 slightly modify the analysis provided with respect to independent claim 1, these additional elements/functions are insufficient to render the dependent claims eligible, as detailed above. Therefore, these dependent claims are also ineligible.
With respect to the eligibility analysis of claims 3, the claim recites item f) above, which do not introduce additional elements/functions. The additional language merely represents statements directed to non-functional descriptive material by describing what the identifier is. Those statements are insufficient to significantly alter the eligibility analysis.
With respect to the eligibility analysis of claim 4, the claim recites item g) above, which do not introduce additional elements/functions. The additional language merely represents statements directed to non-functional descriptive material by describing what the number comprises and description of this data content. Those statements are insufficient to significantly alter the eligibility analysis.
With respect to the eligibility analysis of claim 5, the claim recites item h) above, which do not introduce additional elements/functions. The additional language merely represents statements directed to non-functional descriptive material by describing what the number comprises and description of this data content. Those statements are insufficient to significantly alter the eligibility analysis.
Therefore, the additional language f)-h) of dependent claims 3- 5 do not alter the analysis provided with respect to independent claim 1. In other words, the claims do not introduce additional elements that would alter the analysis with respect to Steps 2A or 2B above in any meaningful way. Therefore, these dependent claims are also ineligible.
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.
Claims 1, 3, 6 and 7 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Desai et al. (US 2013/0268437 A1) in view of Fiske et al. (US 2014/0040149 A1).
With respect to claim 1, Desai et al. teach a mobile device comprising: a processing circuit comprising a processor coupled to a memory (Secure ecosystem infrastructure enabling multiple types of electronic wallets in an ecosystem of issuers, service providers, and acquires of instruments) comprising:
enabling access to the client application during a first session based on a first device token identifying... the mobile device and a customer token identifying a user (see Fig. 31B, successful wallet activation 3142, paragraph [0368]: “The method 3100 further includes the ESB configured for sending the information to TSM at step 3130. At step 3132, the TSM may communicate with the TSM proxy client and initiates the SE personalization process. At step 3134, the TSM may personalize the secure element with wallet companion applet installation and may perform store data on it with the hardware and wallet related information. At step 3138, the TSM may send a notification to the wallet server once the personalization is complete. At step 3140, the wallet server may update the wallet status as "active" and notifies the wallet client. At step 3142 of the method, the mobile wallet may show a confirmation to the user indicating successful wallet activation.”; Examiner notes the device token(s) are described in conjunction with paragraph [0366 and the customer token(s) are described in paragraph [0365]. The "enabling" is based on the verification of this data, as recited in conjunction with paragraph [0367]);
receiving, by the client application during the first session, an identifier from the computing system, the identifier associated with the user and generated by the computing system in response to a request; and (see Fig. 41, token/stack of tokens sent to mobile wallet 4106, paragraph [0400]);
receiving, by the client application during the first session and based on a comparison of the received identifier with an existing identifier, an approval for the request. (see receipt electronically delivered to the mobile application, paragraph [0530]).
Desai et al. do not explicitly disclose a mobile device comprising: the first device token identifying the first session; receiving a second device token from a computing system during the first session, the second device token identifying the mobile device and a second session.
However, Fiske et al. disclose a mobile device (Payment system) comprising:
the first device token identifying the first session (see paragraph [0111]: “According to embodiments of the invention, the payment keys, which are necessary for the use of the payment application, are provided subsequently to the installation of the payment application, under the control of the issuing bank. Equipping the user device with the payment keys in this manner has the effect of activating the payment application, thereby associating it with an account at the issuing bank, and enabling it to conduct EMV payment transactions...”; paragraph [0113]: “In addition, the payment application is configured such that the ICC Master Key is not held locally on the user device, and instead held by a remote entity such as the issuing bank. The user device is provisioned with an ICC Session Key, generated by the issuing bank on the basis of the ICC Master Key. The ICC Session Key can be generated by the issuing bank in accordance with, for example, the method described above in relation to FIG. 4.”);
receiving a second device token from a computing system during the first session, the second device token identifying the mobile device and a second session; (see paragraph [0117]: “In order to prevent the payment application becoming permanently inoperable once the provided ICC Session Key has been used, embodiments of the present invention utilize the communication interface between the user device and the issuing bank to facilitate the provisioning of further ICC Session Keys.”; paragraph [0120]: “In some arrangements, the user device is configured to maintain a store of multiple ICC Session Keys in order to reduce the frequency in which ICC Session Keys must be provisioned to the user device. This allows the user to complete multiple transactions without requiring a corresponding number of communication instances between the user device the issuing bank. This is particularly advantageous if the connection between the user device the issuing bank is interrupted, as the user may proceed with several transactions during this period. Where the user device maintains a store of multiple ICC Session Keys, a used ICC Session Key may be discarded as described above, flagged as used and therefore unavailable for use in future transactions, or merely removed from a maintained index of unused ICC Session Keys.”).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the provisioning of multiple session keys as disclosed by Fiske et al. in the mobile device of Desai et al., the motivation being to prevent the payment application from becoming permanently inoperable once the provided (first) ICC Session Key has been used (see Fiske et al., paragraph [0117]).
With respect to the BRI of the claim, Examiner notes that claim 1 recites “ first device token identifying the first session and the mobile device”; “ a customer token identifying a user”; “the identifier associated with the user and generated by the computing system in response to a request”, language directed to non-functional descriptive material. See MPEP 2111.05.
With respect to claim 3, the combination of Desai et al. and Fiske et al. teaches all the subject matter of the mobile device as described above with respect to claim 1. Furthermore, Desai et al. disclose a mobile device wherein: the identifier is a tokenized card number comprising a plurality of digits; at least four digits of the tokenized card number match an actual credit card number of the user; and at least one of the plurality of digits other than the at least four digits do not match the actual credit card number of the user (see token comprises a truncated primary account number with alphabetic and numeric characters replacing the middle digits of the primary account number, paragraph [0385]). Regarding the BRI of the claim, Examiner notes that claim 3 recites “the identifier is a tokenized card number comprising a plurality of digits; at least four digits of the tokenized card number match an actual credit card number of the user; and at least one of the plurality of digits other than the at least four digits do not match the actual credit card number of the user.”, language directed to non-functional descriptive material. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claim 6, the combination of Desai et al. and Fiske et al. teaches all the subject matter of the mobile device as described above with respect to claim 1. Furthermore, Desai et al. disclose a mobile device wherein the mobile device communicates with a recipient computer system via a network, the operations further comprising: transmitting, by the mobile device via the network, the identifier to the recipient computer system (see payment facilitator (acquirer) routes the transaction to the issuer of the payment card, paragraph [0530]). The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claim 7, the combination of Desai et al. and Fiske et al. teaches all the subject matter of the mobile device as described above with respect to claim 1. Furthermore, Desai et al. disclose a mobile device wherein the mobile device communicates with a recipient computer system via a near-field communication (NFC), the operations further comprising: generating, by the mobile device during the first session, a code including the identifier; and transmitting, by the mobile device via NFC, the code to the recipient computer system (see paragraph [0529]: “After the payment option may be chosen the mobile application may initiate a checkout process with the POS. The payment option may be initiated via multiple implementation options depending upon the channels that may be supported by the POS and the mobile phone. In an example, a tokenized NFC may be used for initiating the checkout process. The POS may be near field communication (NFC) enabled for this option. The mobile application may request the SDP 5508 for a token for the selected payment card. The SDP 5508 may authenticate the mobile application and may route the request to corresponding token generator for a concerned issuer. The consumer may be required to tap the phone at the NFC enabled POS to transmit token. In an example, the NFC may be international organization for standardization (ISO) and the international electrotechnical commission (IEC) standard 18092. In an example, a secure element NFC (SE NFC) may be used for initiating the checkout process. In this case, the consumer may be required to tap the phone at NFC enabled POS with the payment credential stored in the SE on the phone. In an example, the NFC may be international organization for standardization (ISO) and the international electrotechnical commission (IEC) standard 14443. In an example, a QR code scan may be used for initiating the checkout process. The mobile application may request the SDP 5508 for a token for the selected payment card. The SDP 5508 may authenticate the mobile application and may route the request to corresponding token generator for a concerned issuer. The mobile application may convert token into a 2D bar code that is scanned by the POS. In an example, a virtual reader may be used for initiating the checkout process. The mobile application may capture the merchant, POS, and transaction information by scanning a QR code or tapping an NFC tag. The mobile application may send the data along with selected card OTA to SDP 5508. The SDP 5508 may request token, and send the token along with other information to POS through a back-end process.”;). The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Desai et al. (US 2013/0268437 A1), in view of Fiske et al. (US 2014/0040149 A1) and in view of Agarawal et al. (US 2015/0254942 A1),
With respect to claim 2, the combination of Desai et al. and Fiske et al. teaches all the subject matter of the mobile device as described above with respect to claim 1. Furthermore, Desai et al. disclose a mobile device wherein the approval for the request is provided via a user interface displayed on the mobile device during the first session, (see receipt electronically delivered to the mobile application, paragraph [0530]).
The combination of Desai et al. and Fiske et al. does not explicitly disclose: wherein the user interface includes an optical code, the operations further comprising: providing, by the mobile device via the user interface, the optical code to a code scanner of a recipient.
However, Agarawal et al. disclose a mobile device (QR code receipt) comprising:
wherein the user interface includes an optical code, the operations further comprising: providing, by the mobile device via the user interface, the optical code to a code scanner of a recipient (see paragraph [0022]: “The transaction device 102 further comprises a graphical user interface (GUI) such as a display. In particular embodiments, the GUI may further include a touch screen interface. The transaction device logic 106 is operable to generate a quick response (QR) code 110 that comprises the data representative of the transaction, The transaction device logic 106 is further operable to cause the QR code 110 to be displayed on the GUI 108.”; paragraph [0024]: “A scanning device 104 is operable to obtain the QR code 110 from the transaction device 102 and create a receipt (not shown, see, e.g., receipt 202 in FIG. 2) from the QR code. The scanning device 104 comprises a scanner 112 that can scan or read the QR code 110 and receipt logic 114 that can create the receipt from the scanned QR code.”; paragraph [0068]: “At 804, a QR code is created. The QR code is based on the data representative of the transaction, or data representative of a plurality of transactions. Any physically realizable number of transactions can be represented by a QR code. In particular embodiments, the data representative of the transaction is encrypted.”).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the QR-code comprising data representative of a transaction as disclosed by Agarawal et al. in the mobile device of Desai et al. and Fiske et al., the motivation being to increase security by encrypting the data representative of the transaction (see Agarawal et al., paragraph [0027]).
Regarding the BRI of the claim, Examiner notes that claim 2 “wherein the approval for the request is provided via a user interface displayed on the mobile device during the first session...”, language directed to not positively recited method steps. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
Claim 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Desai et al. (US 2013/0268437 A1), in view of Fiske et al. (US 2014/0040149 A1), and in view of Royyuru (US 2011/0153496 A1).
With respect to claim 4, the combination of Desai et al. and Fiske et al. teaches all the subject matter of the mobile device as described above with respect to claim 3. The combination of Desai et al. and Fiske et al. does not explicitly teach a mobile device wherein the tokenized card number comprises a first issuer identification number that identifies the computing system.
However, Royyuru discloses a mobile device (Authentication of card-not-present transactions) wherein the tokenized card number comprises a first issuer identification number that identifies the computing system (see new prefix of 6 or more left-most digits in addition to encrypted portion so the transaction can be routed through a payment processor with the keys and capability to decrypt the dynamic PAN, paragraph [0045]). Regarding the BRI of the claim, Examiner notes that claim 4 recites “wherein the tokenized card number comprises a first issuer identification number that identifies the computing system”, language directed to non-functional descriptive material. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the dynamic token generation algorithm as disclosed by Royyuru in the mobile device of Desai et al. and Fiske et al., the motivation being to allow the transaction to be routed properly through the payment network, in case of maintaining the portion of the real PAN used for routing or to a payment processor, in case the dynamic token is constructed with a new prefix (see Royyuru, paragraph [0045]).
With respect to claim 5, the combination of Desai et al., Fiske et al. and Royyuru teaches all the subject matter of the mobile device as described above with respect to claim 4. Furthermore, Royyuru discloses a mobile device wherein the actual credit card number comprises a second issuer identification number different from the first issuer identification number of the tokenized card number (see dynamic PAN can be constructed with a new prefix of 6 or more left-most digits in addition to encrypted portion, paragraph [0045]).
Regarding the BRI of the claim, Examiner notes that claim 5 recites “wherein the actual credit card number comprises a second issuer identification number different from the first issuer identification number of the tokenized card number”, language directed to non-functional descriptive material. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Wolfs et al. (US 2012/0239572 A1) disclose systems and methods for performing financial transactions using active authentication, including generating a single-use transaction key for a financial transaction.
Nagasundaram et al. (US 2015/0112870 A1) disclose contextual transaction token methods and systems, including payment/transaction token formatting.
O'Regan et al. (US 2016/0092874 A1) disclose method and system for conducting pre-authorized financial transactions, including generating a confirmation message or a denial message in accordance with the predefined authorization setting.
D'Agostino (US 2015/0032634 A1) discloses cloud-based electronic payment processing, including generating a unique single-use account number.
Bayod et al. (US 2011/0231319 A1) disclose method to make payment or charge safe transactions using programmable mobile telephones, including enabling access to a mobile phone application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDUARDO D CASTILHO whose telephone number is (571)270-1592. The examiner can normally be reached Mon-Fri 8-5.
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/EDUARDO CASTILHO/Primary Examiner, Art Unit 3698