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 .
Acknowledgement
The amendment/request for reconsideration dated 11/12/2025 is acknowledged.
Status of Claims
Claims 1, 9 and 16 are currently amended.
Claim 10 is cancelled.
Claim 21 is added.
Claims 1-9 and 11-21 are pending.
Response to Arguments
Regarding 35 U.S.C. 101 rejections- the 35 U.S.C. 101 rejections are maintained below.
Applicant's amendments have necessitated the new ground(s) of rejection presented in this Office action. Thus newly provided rejections are presented herein.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2, 9-15 and 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 2 recites, “receiving the access comprises receiving a provisioned instance of the credential.” According to the specification, “[0026]…the service provider server 108 may facilitate provisioning a credential of a user on a secure element of the electronic device….the credential may be associated with an account (e.g., credit card, debit card, or the like) owned or managed a user and stored on a digital wallet of the electronic device 102, such as in the form of a credential provisioned on a secure element of the electronic device 102. In one or more implementations, at least one of the financial institution server 106 and the service provider server 108 may provision the credential on the electronic device 102 by, for example, on a secure element of the electronic device 102. Similarly, at least one of the financial institution server 106 and the service provider server 108 may provision the credential on the electronic device 104 subject to authorization by the electronic device 102 and/or the user of the electronic device 102.”
It is not clear from the specification the procedures or steps that are taken wherein a provisioned instance of the credential is received. Said a different way, the algorithm, steps or procedure of provisioning a credential is not described in the specification with sufficient detail so that one or ordinary skill in the art would understand how the inventor intended the function of receiving a provisioned credential is to be performed. See MPEP 2161.01 I
Claim 9 recites, “…a first portion of a credential that is provisioned on a second device…”
It is not clear from the specification the procedures or steps that are taken wherein a provisioned instance of the credential is received. Said a different way, the algorithm, steps or procedure of provisioning a credential is not described in the specification with sufficient detail so that one or ordinary skill in the art would understand how the inventor intended the function of receiving a provisioned credential is to be performed. See MPEP 2161.01 I
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 recites the limitation "the usage" in the claim. There is insufficient antecedent basis for this limitation in the claim.
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.
Claim(s) 1-9 and 11-21 are rejected under 35 U.S.C. 101 because the invention is directed to an abstract idea without significantly more.
In the instant case, claim 1 a method. Claim 9 to a computer readable medium. Claim 16 is directed to a system.
Claim 1 is directed to the abstract idea of "performing a transaction by providing or using a credential" which is grouped under certain methods of organizing human activity related to managing transactions between people in sales activities in prong one of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance).
Claim 1 recites "providing... a request to use a credential…; and in response to a determination,…that the second device is in proximity to the first device;…receiving,…, access to the credential at the first device; and performing,…, a transaction using the credential; and determining that the first device is no longer within proximity to the second device from the use of the credential.”
According, the claim recites an abstract idea (see 2019 Revised Patent Subject Matter Eligibility Guidance).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional elements of the claim such as a first device and a second device or a system comprising memory and a processor represent the use of a computers as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to using rules to authorize a financial transaction.
When analyzed under step 2B (See 2019 Revised Patent Subject Matter Eligibility Guidance), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claims merely describe the concept of performing a transaction by providing or using a credential Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Hence, claim 1 is not patent eligible. Independent claims 9 and 16 are similarly rejected.
Claims 2-8 and 11-21 further recite steps and functions which are used to implement the abstract idea of performing a transaction by providing or using a credential and thus do not provide significantly more than the abstract idea itself.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-9 and 11-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chester (US 2018/0082288).
Regarding claim 1, Chester discloses (Currently amended) A method (Figs. 4-6), comprising:
providing, by a first device (item# 102B) to a second device (item# 102A), a request to use a credential stored on the second device;(Fig. 4)(item#400)(item# 402)[¶0053];(Fig. 5)(item# 500)(item# 502)[¶0060] and
in response to a determination, based on a communication between the first device and the second device, that the second device is in proximity to the first device[[,]] [¶0018],[¶0030]
establishing, between a first wireless communication interface of the first device and a second wireless communication interface of the second device, a wireless communication link, [¶0018][102-AB, may communicate with each other via direct wireless communication channel (e.g., Bluetooth, Wi-Fi, and the like]
receiving, via the wireless communication link, access to the credential at the first device[[;]],[¶0053],[¶0060] and
performing, by the first device and without use of the second device, a transaction using the credential;[¶0019], [¶0022-¶0023], [¶0058] and
in response to determining that the first device is no longer within the proximity to the second device, [¶0054]
preventing the first device from use of the credential. [¶0054 – the credential (item# 210A) can be frozen]
Regarding claim 2, Chester discloses wherein receiving the access comprises receiving a provisioned instance of the credential. [¶0021-wherein 102A-B credentials are used in direct cloud based mobile payment system]
Regarding claim 3, Chester discloses wherein the transaction comprises a payment-based transaction. [¶0019-wireless payment terminal], [¶0022]
Regarding claim 4, Chester discloses, authorizing the usage comprises altering the credential from an inactive state to an active state, [¶0056-¶0057] and
based on the active state, the credential is usable by the first device to perform the transaction.[¶0057]
Regarding claim 5, Chester discloses further comprising receiving, over a network used to determine the second device is in proximity to the first device, a verification value associated with the credential. [¶0018],[¶0030]
Regarding claim 6, Chester discloses wherein the credential comprises one or more conditions that include at least one of a time limit for using the credential by the first device, a spending limit for using the credential by the first device, or a transaction limit for the credential by the first device.[¶0014-stored monetary value interpreted as spending or transaction limit]
Regarding claim 7, Chester discloses further comprising deactivating, based on a nonsatisfaction of at least one of the one or more conditions, the credential.[¶0032], [¶0054], [¶0055]
Regarding claim 8, Chester discloses wherein the credential is based on an account stored on the second device.[¶0021], [¶0023]
Regarding claim 9, Chester discloses a non-transitory computer-readable medium [¶0078], comprising:
computer-readable instructions that, when executed by a processor (Fig. 2)(item# 202)[¶0035], cause the processor to perform one or more operations comprising:
receiving, at a first device, a first portion of a credential that is provisioned on a second device;[¶0053], [¶0060]
after receiving the first portion of the credential, providing, to the second device, a request to use the credential; [¶0053], [¶0060]
in response to a determination, based on a communication between the first device and the second device, that the second device is in proximity to the first device: [¶0018],[¶0030]
establishing, between a first wireless communication interface of the first device and a second wireless communication interface of the second device, a wireless communication link, receiving, via the wireless communication link and at the first device in response to the request, a second portion of the credential from the second device; [¶0053],[¶0060]
activating the credential based at least in part on the first portion and second portion; [¶0056-¶0057]
[[and]] performing, by the first device and without use of the second device, a transaction using the activated credential; [¶0019], [¶0022-¶0023]
and in response to a determination that the first device is no longer within the proximity to the second device, preventing the first device from use of the credential. [¶0018],[¶0030], [¶0054]
10. (Canceled).
Regarding claim 11, Chester discloses, wherein the transaction is based on one or more conditions of the activated credential. [¶0014], [¶0057]
Regarding claim 12, Chester discloses, wherein the one or more conditions comprise at least one of a time limit for using the activated credential, a spending limit for using the activated credential, or a transaction limit for the activated credential. [¶0014-¶0015, ¶0017]]
Regarding claim 13, Chester discloses providing a request to override the one or more conditions to perform the transaction using the activated credential. [¶0057]
Regarding claim 14, Chester discloses wherein the transaction comprises a payment-based transaction. [¶0003], [¶0014], [¶0017]
Regarding claim 15. Chester discloses, wherein performing the transaction comprises performing, by the first device, the transaction. [¶0057]
Regarding claim 16, Chester discloses (Currently amended) A system, comprising:
a memory (item# 204); [[and]]
a first wireless communication interface and a processor (item# 202) configured to:
receive a credential in an inactive state;[¶0061]
provide a request to a device to use the credential;[¶0053],[¶0060]
in response to a determination, based on a communication between the processor and the device, that the device being within a proximity to the processor[[,]] [¶0018],[¶0030]
establish, between the first wireless communication interface and a second wireless communication interface of the device, a wireless communication link, receive, via the wireless communication link and from the device, credential activation information; [¶0018][102-AB, may communicate with each other via direct wireless communication channel (e.g., Bluetooth, Wi-Fi, and the like], [¶0056-¶0057]
activate the credential using the credential activation information; [¶0057] [[and]] perform, without use of the device, a transaction using the activated credential; [¶0057] and
in response to a determination that the processor is no longer within the proximity to the device, prevent the processor from use of the credential. [¶0018],[¶0030]
Regarding claim 17, Chester discloses, wherein in the inactive state, the credential is inaccessible by a user.[¶0032],[¶0061]
Regarding claim 18, Chester discloses, wherein the activated credential comprises a verification value or a token.[¶0024-scripts], [¶0028]
Regarding claim 19, Chester discloses, further comprising a communication interface, wherein the proximity is determined based on the communication interface. [¶0018],[¶0030]
Regarding claim 20, Chester discloses , wherein the processor is further configured to perform the transaction based on one or more conditions of the activated credential. [¶0014-¶0015]
Regarding claim 21, Chester discloses a computer-readable medium of claim 9, wherein performing the transaction comprises:
receiving the credential in an inactive state; [¶0061]
receiving, via the wireless communication link and from the device, credential activation information; [¶0014-¶0015, ¶0017, ¶0057]]
activating the credential using the credential activation information;[¶0030, ¶0057]] and
performing the transaction using the activated credential.[¶0058]
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Calman et al (US 2013/0046690) system and method for credential lending
Quaim-Maqami et al (US 2014/0279498) secure identity element
Subramanian et al (US 2015/0161597) discloses transactions using temporary credential data
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DANIEL S FELTEN whose telephone number is (571)272-6742. The examiner can normally be reached Flex.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan D Donlon can be reached at 5712703602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DANIEL S. FELTEN
Examiner
Art Unit 3692
/DANIEL S FELTEN/Primary Examiner, Art Unit 3692