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 .
DETAILED ACTION
Status of Claims
Claims 1, 3-7, 10 and 12-16 and 19 are pending.
Response to Arguments
Applicant’s arguments regarding the 103 rejection of the claims have been considered but are not persuasive.
Applicant argues the conclusion that the expiration message contains printed matter is incorrect.
1 – Functional relationship:
A - The message is not mere data because it “offers the user the opportunity to transfer the subscription from the temporary number to the account number through the input device”.
The Office notes that MPEP 2111.05(1)(A) states “A functional relationship can be found where the printed matter performs some function with respect to the product to which it is associated. See Lowry, 32 F.3d at 1584, 32 USPQ2d at 1035 (citing Gulack, 703 F.2d at 1386, 217 USPQ at 404)”. Because the message merely “offers” the user the “opportunity” to transfer the subscription no function is actually performed.
B – The functional relationship is further demonstrated by the limitation to “identify at least one transaction using the temporary number as a periodic payment for a subscription”. The system must perform active monitoring and identification of subscriptions so that the message can offer the transfer opportunity. The message content reflects and depends upon the systems prior operations.
The Office asserts that the MPEP is explicit that the printed matter “must perform some function”. That the printed matter depends on some prior function is the reverse of the MPEP requirement.
C – The examiner’s own rationale for withdrawing the 101 rejection supports this argument, citing that the notification effectively cancels the subscription at the expiration of the temporary number.
The Office asserts that the expiration of the temporary number will occur whether the user is notified or not, thus it is not the notification, but the use of the temporary number that makes the cancelation possible.
Applicant argues the references do not disclose the alleged printed matter at issue. Specifically, Edwards does not disclose offering to transfer the subscription.
The Office asserts that as the printed matter issue has not been effectively traversed, this argument is moot.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claim(s) 1, 3-6, 10, 12-15 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bondesen (2015/0254665) in view of Brody (2001/0029485) and Edwards (2024/0144240).
Bondesen discloses:
1. A system for creating and managing a data base of temporary files within a data
base file environment, the system comprising:
an input device operated by a user (Fig. 7, user computer systems 160) having an active payment card issued by a financial institution ([0002] Tokens may be used as a replacement for sensitive account information such as a user's account number, debit card, credit card, or the like.);
a processor and a non-transitory storage device operated by the financial institution and being operatively coupled for communication with the input device (Fig. 7); and
a temporary file number application stored in the storage device, the application
including executable code (Tokenization service systems 150, Fig, 7, 0122, As illustrated in FIG. 7, the user computer systems 160 are operatively coupled, via a network 102 to the merchant systems 110, issuing financial institution systems 140, acquiring financial institution systems 120, payment association networks
130, and/or the tokenization service systems 150. In this way, the user 2 may utilize the user computer systems 160 to enter into secure transactions using a token with the merchant 10 through the use of the merchant systems 110, acquiring financial systems 120, payment association networks 130, the issuing financial institution systems 140, and/or the tokenization service systems 150. FIG. 7 illustrates only one example of embodiments of a token system 100, and it will be appreciated that in other embodiments one or more of the systems (e.g., computers, mobile devices, servers, or other like systems) may be combined into a single system or be made up of multiple systems. that, when executed, causes the processor to:
receive a temporary number request from the input device (0044, user request for token. 0041, token may be limited as described within);
identify the active payment card by a user operating the input device by a login to an account associated with the active payment card or by the user selecting the account associated with the active payment card from at least two accounts of the user displayed at a web page generated by the financial institution at the input device (0096
associating, one or more accounts, interface (0077));
request limit information selected by the user through the input device, the limit information including at least one of an identity of a vendor, a maximum dollar amount to be charged and an active time period (0041, merchant, transaction amount, 0069, time period);
set a time period as the active time period received from the user or a default time period (0004, time period limit may be applied, 0044, The limits may be placed on the token by the user);
generate a temporary number that expires at an end of the time period (0044, generate token, 0015, token expires at end of period);
store the temporary number, the limit information, [the prompt time] and the time period as a temporary file in a data base in the storage device and associate the temporary file with an account number of the active payment card issued by the financial institution to the user; ( 0044, The token may be stored in the user's payment device 4 (e.g., on the digital wallet) or stored on the cloud or other service through the tokenization service 50. The tokenization service 50 may also store limits (e.g., geographic limits, transaction amount limits, merchant limits, product limits, any other limit described herein, or the like) associated with the token that may limit the transactions in which the user 2 may enter. [0102] In these examples, the temporary token is provided to the user 2 and it may disappear after the time period is extinguished and/or the transaction is completed.);
wherein the temporary number is a virtual card temporary account number issued by the financial institution (0035, token issued in place of physical instruments, alias for account numbers);
monitor use of the temporary number and perform a corrective action in response to a use that violates any of the limit information (0046, FI receives transaction information, determine if limits are met and denies or allows the transaction);
Bondesen does not disclose:
set a prompt time that occurs before the end of the time period;
send an expiration message to the user input device at the prompt time
However, Brody discloses, [0040] Notification of expiration could also be an on or off configuration option, which could control whether the consumer is notified via email prior to the card's expiration.
Bondesen nor Brody disclose:
the expiration message identifying the temporary number, the subscription and the time period, wherein the expiration message offers to the user the opportunity to transfer the subscription from the temporary number to the account number through the input device.
These elements are merely a recitation of intended use and/or nonfunctional descriptive material and does not, in and of itself, merit patentable weight. In the present case, the limitation is considered “printed matter” and is not functionally connected to the remaining claim elements.
One of ordinary skill would have been motivated to modify Bondesen with the features of Brody for effective card management.
Bondesen does not disclose:
identify at least one transaction using the temporary number as a periodic payment for a subscription;
However, Edwards discloses in 0043-0045 that financial institutions may determine which charges and from which merchants may be recurring charges and that the use of virtual card numbers may make this identification process easier.
One of ordinary skill would have been motivated to modify Bondesen with the identification process of Edwards as the reference are each directed to the use of temporary/virtual card numbers.
3. The system according to Claim 1 wherein the processor receives from the input
device an identity of a vendor and stores the identity in the temporary file (0100, limited to a predetermined number of merchants (suggesting that the merchants be identified)).
4. The system according to Claim 3 wherein the processor limits use of the
temporary number to transactions between the user and the vendor (see claim 3 above).
5. The system according to Claim 1 wherein the processor receives from the input
device a maximum dollar amount and stores the maximum dollar amount in the temporary file (0100, an amount limit).
6. The system according to Claim 5 wherein when the processor receives a request
for a transaction between the user and a third party using the temporary number, the maximum dollar amount limits a onetime amount of the transaction, a total amount of the transaction and any previous transactions, or a recurring amount of the transaction as part of a subscription (0100, an amount limit suggests one or all of the above).
Claims 10, 12-15 and 19 are similarly rejected.
Claim(s) 7 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bondesen (2015/0254665) in view of Brody (2001/0029485) and Edwards (2024/0144240) as applied to claims 1 and 10 and further in view of Cline (2006/0173780).
Cline, not Bondesen discloses:
7/16. The system/method according to claim 1/10 wherein the processor receives from the input device a nickname and stores the nickname in the temporary file whereby the input device can access the temporary file using the nickname (0046, The primary holder of a purchase card product can manage purchase card balance(s) using an online account profile. For example, e-commerce application 122 may be suitably configured to generate a summary web page that identifies each purchase card number and its corresponding balance, and provides cardholder access to order and transaction history for each active purchase card product (and possibly inactive purchase card products). In addition, purchase card system 100 may allow the cardholder to identify purchase card balances using nicknames, government funding source identifiers, grant numbers, contract numbers, or the like. This feature is desirable to enable the cardholder to quickly identify the source of funds corresponding to a given purchase card balance, thus preventing misapplication of funds.).
As disclosed above Cline presents a method of quickly identifying the source of funds similar to applicant’s own motivation of quickly identifying the account (para.0068 of specification).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM E RANKINS whose telephone number is (571)270-3465. The examiner can normally be reached on 9-530 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett Sigmond can be reached on 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM E RANKINS/Primary Examiner, Art Unit 3694
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