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 1-18 were pending. Claims 8, 9, 17 and 18 are canceled and all claims are amended. Claims 1-7 and 10-16 are pending.
Response to Arguments
Applicant’s arguments regarding the 103 rejection of the claims have been considered and are persuasive however, a new rejection of the claims is made in view of the claim amendments.
Applicant’s arguments regarding the rationale for combining the references in the 103 rejection are analyzed as follows:
Applicant argues the cited motivations are absent from the prior art and can only be gleaned from the applicant’s specification and the references represent divergent fields of endeavor.
The Office asserts that Ketharaju, Olson and Lindelsee are no longer necessary based on further review and search of the prior art. The remaining references Brody and Edwards are directed to payment applications including virtual/temporary/anonymous cards and are thus in the same field of endeavor. Per MPEP 2141.01(a)(I), When determining whether a prior art reference meets the "same field of endeavor" test for the analogous art, the primary focus is on what the reference discloses. Airbus, 41 F.3d at 1380. The examiner must consider the disclosure of each reference "in view of the ‘the reality of the circumstances.’" Airbus, 41 F.3d at 1380 (quoting Bigio, 381 F.3d at 1326, 72 USPQ2d at 1212). These circumstances are to be weighed "from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor." Airbus, 41 F.3d at 1380. See also Donner Technology, LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 2020 USPQ2d 11335 (Fed. Cir. 2020); Sanofi-Aventis, 66 F.4th at 1378; and Netflix, Inc. v. DivX, LLC, 80 F.4th 1352, 1358-59, 2023 USPQ2d 1057 (Fed. Cir. 2023) ("The field of endeavor is ‘not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.’") (quoting Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001, 120 USPQ2d 1593, 1597 (Fed. Cir. 2016)).
The 101 rejection of the claims is withdrawn after further review. Applicant’s specification at 0064 discloses that one problem that is addressed by the claims is a monthly subscription for goods and/or services that the vendor makes difficult to cancel. The claims address this issue by using the temporary account number for the subscription. The system generates and associates the temporary number with the user’s account of choice and the user sets limits for the temporary number. The system monitors use of the number and identifies a subscription associated with a transaction and notifies the user, when prompted as related to the user set expiration, of the expiration, the subscription. The above not only serves as a reminder for the user but also effectively cancels the subscription at the expiration of the temporary number.
The claims require the use of the temporary number and the temporary number generation, association with the account number, and monitoring cannot be practically and/or effectively performed mentally by a human or by a human with the aid of pen and paper.
For these reasons the 101 rejection of the claims is withdrawn.
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) 1-6 and 10-15 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.
Claims 10-15 are similarly rejected.
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).
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
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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