DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s correspondence filed on 3/11/26.
The Examiner notes that citations to United States Patent Application Publication paragraphs are formatted as [####], #### representing the paragraph number.
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 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.
Status of Claims
Claims 1-20 are currently pending.
Claims 1-20 are rejected as set forth below.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/11/26 has been entered.
Response to Arguments
Claim Rejections - 35 U.S.C. § 112(b)
Applicant’s arguments with respect to claim(s) 3, 10, 17 have been fully considered and are persuasive. The rejection (and corresponding rejections to its dependent claims, if applicable) is withdrawn.
Claim Rejections - 35 U.S.C. § 103
Applicant’s arguments with respect to claims 1, 8, 15 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18796237 in view of United States Patent No. 11244297 to Puffer and United States Patent Application Publication No. 20200065803 to Abouelenin.
As per claims 1-20, claims 1-20 of ‘237 substantially teach the claimed invention. ‘237 does not explicitly teach, but Puffer teaches:
receiving, by a digital wallet on a user device and from a provider server via an intermediate server, a digital credential; (col 2 lines 39-59, “In response, an inactive payment token representing the payment card is provisioned to the customer's mobile wallet on the customer's mobile device, either by the mobile wallet provider or by a token service provider.”; col 3 lines 28-33, “As described in further detail below, the system 100 includes a mobile device 102 and a payment card 104 associated with a customer 106, a mobile wallet computing system 108, a token service provider computing system 110, an issuer computing system 112, and an ATM 114 connected by a secure network (e.g., network 116).”)
One of ordinary skill in the art would have recognized that applying the known technique of Puffer to the known invention of ‘237 would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such digital credential features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to receive, by a digital wallet on a user device and from a provider server via an intermediate server, a digital credential, results in an improved invention because applying said technique ensures that the correct digital credential is stored in the digital wallet for future verification and use versus manually inputting the digital credential, thus improving the overall reliability of the invention.
‘237 does not explicitly teach, but Abouelenin teaches:
receiving, on an interface, a user input representing authentication information; generating, by a secure element of the user device, a cryptogram based on the authentication information and at least some of the credential information; ([0022], “In the example of FIG. 1A, the user device 110 includes the secure element 116, a secure element communication interface 114 (“interface”) which provides secure communications to payment network systems and is controlled by the operating system of the user device 110, and a consumer device cardholder verification method (“CDCVM”) 115 module which can be used to verify/authenticate that a user of the user device 110 is an authorized user of a payment card being used in the transaction. For example, the CDCVM 115 may perform a passcode verification, biometric verification, facial verification, PIN verification, and the like. The verification information may be provided to the secure element 116 and used by the secure element 116 when generating the payload (payment cryptogram).”; [0030], “In 171, the secure element 116 generates a remote payload (cryptogram) that includes dynamic data for verifying the transaction with the merchant. In addition, the secure element 116 signs/encrypts the payload with the merchant public key 151. The cryptogram may include transaction-based data such as tokenized PAN, expiry, verification code, merchant information, date, time, etc. In addition, the cryptogram may include user verification information provided from the CDCVM 115.”)
One of ordinary skill in the art would have recognized that applying the known technique of Abouelenin to the known invention of ‘237 as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such cryptogram features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the digital wallet to receive a user input representing authentication information and modifying the invention to generate, by a secure element of the user device, a cryptogram based on the authentication information and at least some of the credential information results in an improved invention because applying said technique ensures that the cryptogram is securely generated based on secure authentication information inputted by the user, thus ensuring that the cryptogram can be determined to be associated with the user and therefore improving the overall security of the invention.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 112(a)
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 1-20 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.
As per claims 1, 8, 15, the limitation “transmitting, by the digital wallet on the user device and to the provider server via the intermediate server, (i) the credential information and (ii) the cryptogram, to verify the credential information” fails to comply with the written description requirement. Specifically, the Specification does not sufficiently disclose the computer/algorithm required to perform the claimed function of verifying, by the provider server, the credential information based on the transmitted credential information and the transmitted cryptogram. The Specification merely repeats the claimed limitation and provides no details regarding how the cryptogram is verified based on the credential information. See [0096]: (“The provider server 108 may receive the response from the intermediate server 106 and verify the credential information based on the response.”) See MPEP 2161.01(I): (“When examining computer implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter.… If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made.”).
By virtue of their dependence, the dependent claims are similarly rejected.
Claim Rejections - 35 USC § 103
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 1-5, 7-12, 14-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 20210192519 to McHugh in view of United States Patent No. 11244297 to Puffer, United States Patent Application Publication No. 20210004454 to Chester, United States Patent Application Publication No. 20230281594 to McHugh 2, and United States Patent Application Publication No. 20200065803 to Abouelenin.
As per claims 1, 8, 15, McHugh teaches:
A method comprising: receiving, via a near-field communication (NFC) component of the user device and from a physical credential corresponding to the digital credential, credential information associated with the physical credential; ([0072]-[0074], “As illustrated in FIG. 6, the user selects the one-tap contactless card authentication 608 option. According to embodiments, when the user computing device detects the contactless card via NFC, the computing device may receive one or more cryptograms from the contactless card.”)
transmitting, by the digital wallet on the user device and to the provider server via the intermediate server, (i) the credential information and (ii) the cryptogram, to verify the credential information; receiving, by the digital wallet and from the provider server via the intermediate server, an indication that the physical credential is verified by the provider server; ([0077], “In another example, the banking app 602 may receive the one or more cryptograms from the contactless card and send the cryptogram(s) to one or more remote computing devices, which may be secure backend servers, to perform the decryption of the cryptograms and determine whether the information contained in the one or more cryptograms match authentication information related to the user. The one or more remote computing devices may then send to banking app 602 an indication or confirmation of verification of the user's identity.”; [0027], “System 100 may include one or more networks 115. In some examples, network 115 may be one or more of a wireless network, a wired network or any combination of wireless network and wired network and may be configured to connect client device 110 to server 120.”)
McHugh does not explicitly teach, but Puffer teaches:
receiving, by a digital wallet on a user device and from a provider server via an intermediate server, a digital credential; (col 2 lines 39-59, “In response, an inactive payment token representing the payment card is provisioned to the customer's mobile wallet on the customer's mobile device, either by the mobile wallet provider or by a token service provider.”; col 3 lines 28-33, “As described in further detail below, the system 100 includes a mobile device 102 and a payment card 104 associated with a customer 106, a mobile wallet computing system 108, a token service provider computing system 110, an issuer computing system 112, and an ATM 114 connected by a secure network (e.g., network 116).”)
One of ordinary skill in the art would have recognized that applying the known technique of Puffer to the known invention of McHugh would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such digital credential features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to receive, by a digital wallet on a user device and from a provider server via an intermediate server, a digital credential, results in an improved invention because applying said technique ensures that the correct digital credential is stored in the digital wallet for future verification and use versus manually inputting the digital credential, thus improving the overall reliability of the invention.
McHugh as modified does not explicitly teach, but Chester teaches:
provisioning, by the digital wallet, the digital credential on the secure element of the user device. ([0019], “For example, as shown in FIG. 1, system 1 may include a first end-user host electronic device 100 (e.g., a laptop computer (see, e.g., FIG. 1) or a smart phone (see, e.g., FIG. 3) or a wearable device or the like) that may be accessible to a first user U1 and/or a second user U2 and on which at least one user credential may be provisioned (e.g., on a secure element of first electronic device 100).”; [0037], “Device 100 may launch or otherwise access a specific device application (e.g., card management application 113b of FIG. 2A (e.g., as a “Wallet” or “Passbook” application) for managing various credentials on secure element 145.”)
One of ordinary skill in the art would have recognized that applying the known technique of Chester to the known invention of McHugh as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such secure element features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to receive, by a digital wallet on a user device and from a provider server via an intermediate server, a digital credential, results in an improved invention because applying said technique ensures that correct digital credential is securely stored in the secure element, thus improving the overall security of the invention.
McHugh as modified does not explicitly teach, but McHugh 2 teaches:
after receiving the digital credential, receiving, via a near-field communication (NFC) component of the user device and from a physical credential corresponding to the digital credential, credential information associated with the physical credential; ([0075] – [0076], “According to embodiments, when the user computing device detects the contactless card via NFC, the computing device may receive one or more cryptograms from the contactless card. It may be understood that a cryptogram may broadly refer to any encrypted text, data, or information. It may further be understood that the one or more cryptograms may be received as NFC data exchange format (NDEF) messages. In examples, the one or more received cryptograms may contain information at least identifying the user or other related information indicating that the card belongs to a particular user, which may be referred to as “card-user information.” For instance, the card-user information may be any type of data or information (e.g., ID number, customer number, etc.) associating the contactless card to the user, which may be created or established when the contactless card is created for the user and/or at backend systems when the user signs up or applies for the contactless card. Afterwards, the information contained in the one or more received cryptograms may be matched or compared against authentication information associated with the user to verify the identity of the user. The authentication information is any type of data or information identifying the user signed-in to the banking app (e.g., ID number, customer number, etc.).”)
One of ordinary skill in the art would have recognized that applying the known technique of McHugh 2 to the known invention of McHugh as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such physical/digital credentials features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to, after receiving the digital credential, receive, via a near-field communication (NFC) component of the user device and from a physical credential corresponding to the digital credential, credential information associated with the physical credential, results in an improved invention because applying said technique ensures that the credential information received from the physical credential can be compared with the digital credential for verification purposes, thus improving the overall security of the invention.
McHugh as modified does not explicitly teach, but Abouelenin teaches:
receiving, on an interface, a user input representing authentication information; generating, by a secure element of the user device, a cryptogram based on the authentication information and at least some of the credential information; ([0022], “In the example of FIG. 1A, the user device 110 includes the secure element 116, a secure element communication interface 114 (“interface”) which provides secure communications to payment network systems and is controlled by the operating system of the user device 110, and a consumer device cardholder verification method (“CDCVM”) 115 module which can be used to verify/authenticate that a user of the user device 110 is an authorized user of a payment card being used in the transaction. For example, the CDCVM 115 may perform a passcode verification, biometric verification, facial verification, PIN verification, and the like. The verification information may be provided to the secure element 116 and used by the secure element 116 when generating the payload (payment cryptogram).”; [0030], “In 171, the secure element 116 generates a remote payload (cryptogram) that includes dynamic data for verifying the transaction with the merchant. In addition, the secure element 116 signs/encrypts the payload with the merchant public key 151. The cryptogram may include transaction-based data such as tokenized PAN, expiry, verification code, merchant information, date, time, etc. In addition, the cryptogram may include user verification information provided from the CDCVM 115.”)
One of ordinary skill in the art would have recognized that applying the known technique of Abouelenin to the known invention of McHugh as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such cryptogram features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the digital wallet to receive a user input representing authentication information and modifying the invention to generate, by a secure element of the user device, a cryptogram based on the authentication information and at least some of the credential information results in an improved invention because applying said technique ensures that the cryptogram is securely generated based on secure authentication information inputted by the user, thus ensuring that the cryptogram can be determined to be associated with the user and therefore improving the overall security of the invention.
As per claims 2, 9, 16, Chester teaches:
wherein the credential information is received by the NFC component and provided directly to the secure element of the user device, bypassing a host processor of the user device. ([0045], “An operating system or other application of an end user device (e.g., application 103, application(s) 113, and/or application 143 of device 100, and/or application 203, application(s) 213, and/or an NFC application of device 200) may be configured to call specific application programming interfaces (“APIs”) and SMP broker 440 may be configured to process requests of those APIs and respond with data that may derive the user interface of device 100 and/or of device 200 and/or respond with application protocol data units (“APDUs”) that may communicate with secure element 145 of device 100 and/or with secure element 245 of device 200.”)
As per claims 3, 10, 17, Abouelenin teaches:
wherein the authentication information comprises a password; ([0022])
As per claims 4, 11, 18, Abouelenin teaches:
wherein the password is encrypted by the secure element of the user device, and the cryptogram is generated by the secure element of the user device. ([0030])
As per claims 5, 12, 19, McHugh teaches:
wherein the credential information includes at least one of a card number, an expiry date, and a credential cryptogram associated with physical credential. ([0077])
As per claims 7, 14, Puffer teaches:
wherein the digital credential is inactive when it is received, and the digital credential is activated in response to receiving the indication that the physical credential is verified. (col 2 lines 39-59, “In response, an inactive payment token representing the payment card is provisioned to the customer's mobile wallet on the customer's mobile device, either by the mobile wallet provider or by a token service provider. In some arrangements, the ATM prompts the customer to provide authentication information, such as a personal identification number (PIN) associated with the payment card, before the ATM activates the token. After the token has been activated, the customer can use the activated token to make purchases using the mobile wallet (e.g., by the mobile device transmitting the activated token in lieu of the payment card number to a merchant point-of-sale device to complete purchases).”)
Claims 6, 13, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 20210192519 to McHugh in view of United States Patent No. 11244297 to Puffer, United States Patent Application Publication No. 20210004454 to Chester, United States Patent Application Publication No. 20230281594 to McHugh 2, and United States Patent Application Publication No. 20200065803 to Abouelenin, and further in view of United States Patent Application Publication No. 20220391482 to Gaviola.
As per claims 6, 13, 20, McHugh teaches:
before receiving the credential information, launching a digital wallet application on the user device; and after provisioning the digital credential, rendering a graphic on the digital wallet application on the user device. ([0072]; [0082], “Upon successful verification of the user's identity, the banking app 702 may then transition or link out to a third-party wallet app 710, where at least confirmation of the successful identity verification may be shared with the third-party wallet app 710. Thereafter, the third-party wallet app 710 may display a graphic or indication 712 stating that the one or more financial instruments have been successfully activated in the third-party wallet.”)
Chester teaches:
provisioning the digital credential on the secure element ([0019])
McHugh as modified does not explicitly teach, but Gaviola teaches:
rendering a representation of the digital credential on the digital wallet application on the user device; (Fig 6AF, [0231], “At FIG. 6AF, in response to user input 674, electronic device 600 displays wallet user interface 604, which now includes a representation of digital identification credential 606G, as well as confirmation indication 676 indicating that the new digital identification credential has been successfully added to electronic device 600.”)
One of ordinary skill in the art would have recognized that applying the known technique of Gaviola to the known invention of McHugh as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such digital credential representation features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to render a representation of the digital credential on the digital wallet application on the user device results in an improved invention because applying said technique ensures that the user can easily identify that the digital credential has been added to the digital wallet, thus improving the overall usability of the invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
United States Patent Application Publication No. 20210201296 to Rule discloses systems, methods, articles of manufacture, and computer-readable media for tapping a contactless card to a computing device to provision a virtual number. At least one parameter for authorizing a virtual account number for a subaccount associated with a primary account may be received. An application executing on a processor circuit may receive authentication credentials for the primary account. A card reader may receive encrypted data from a communications interface of a contactless card. The application may transmit the encrypted data to an authentication server. The application may receive verification of the encrypted data from the authentication server. The application may provide the at least one parameter for authorizing the virtual account number and receive a virtual account number for the subaccount generated by a virtual card number server, the virtual account number restricted to a spending limit based on the amount parameter associated with the virtual account number.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY HUANG whose telephone number is (408)918-9799. The examiner can normally be reached 9:00a - 5:30p PT.
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/JAY HUANG/Primary Examiner, Art Unit 3619
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