DETAILED ACTION
Status of Claims
This action is in reply to amendment and response filed on 1/2/26. Claims 1, 7 and 16-25 were amended. Claims 1 and 7-25 are pending and examined..
Response to Arguments
Double Patenting: The Applicant’s amendments and arguments have been fully considered but are not persuasive.
The Applicant argues that the amended claims are not identical to the claims of the priority patents.
The Examiner disagrees.
Priority patents US Patent No. 11663580 and US Patent No. 12073381 in view of US 20200410314 A1 (Stahlhut) recite the amended limitations (e.g.: activating the card number, see Stahlhut, para. 73, 77).
As such, an updated rejection is provided addressing the amended claims.
101: The Applicant amendments and arguments have been fully considered but are not persuasive.
pp. 9-11
The Applicant argues that the claims include additional elements that are significantly more specifically, card circuitry displaying location specific card identifier (e.g.: a credit card number that is only active in a geofenced are) on the card.
This feature is not claimed. The independent claims specifically recite “generating for display, the location-specific card identifier on a second user interface of the user device in response to detecting that the user device is at a location corresponding to the first location”. The BRI of the user device is any computing device with a display and a wireless communication module, such as notebook, (see PGPUB para. 16 “a user device (e.g., wirelessly as illustrated in FIGS. 2 and 3 ), such as a mobile device or a terminal processing a transaction associated with the token 100”). As such, the BRI of the claim limitation is providing a credit card number that is only active in a geofence associated with the notebook (such as within a country) for display on the notebook screen. Transmitting a credit card number for display on a notebook screen does not integrate the abstract idea into a practical application because the additional elements (e.g.: “display”, “user device” and “second user interface of the user device”) are no more than “apply it” because they are mere “[u]se of a computer or other machinery in its ordinary capacity for economic or other tasks”, see MPEP 2106.05(f)(2). The claim as a whole also is not significantly more than the abstract idea because the additional elements are no more than “apply it” because they are mere “[u]se of a computer or other machinery in its ordinary capacity for economic or other tasks”, see MPEP 2106.05(f)(2).
Therefore, the additional elements, individually or in combination, do not improve technology. They merely provide an improvement to the business process of payment security.
The Applicant also argues about Berkheimer memo. The Examiner did not make a well-known, routine and conventional argument in the rejection. Therefore, the Berkheimer memo is not relevant to the rejection.
As such, the rejection is maintained.
103: The Applicant amendments and arguments have been fully considered but are not persuasive.
The Applicant argues that the references cited in the previous rejection do not teach the amended limitations.
The Examiner disagrees.
Previously cited reference US 20200410314 A1 (Stahlhut) teaches activation of the card number (see Stahlhut, para. 77 “the smart card may receive an override instruction from the mobile phone. The override instruction may activate otherwise inactive second sensitive data stored on the smart card”).
As such, the rejection is maintained.
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, 9 and 16 of the current application are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12 of US Patent No. 11663580 (‘580) and claims 1 and 9 of US Patent No. 12073381 (‘381). Although the claims at issue are not identical, they are not patentably distinct from each other because the claim limitations of the patents anticipate the claim limitations of the current application, see MPEP 1504.06(II).
Current application 18/802,957
Patent ‘580
Patent ‘381
Claims 1, 7 and 16
Claims 1, 5 and 14
1, 5 and 14
presenting a first user interface, on a user device associated with a user, comprising one or more user interface elements associated with generating location-specific card identifiers;
receiving from a user device a request to generate a first location-specific card identifier
using a card with a memory and a display, receiving from a user device a request to generate a first location-specific card identifier
obtaining, via user inputs on the first user interface, (i) location information indicating a first location when a location-specific card identifier is generated and (ii) creation time information indicating a time at which the location-specific card identifier is generated;
obtaining device location indicating a creation location at which the user device is located, a creation time information during which the first location-specific card identifier is generated, and a restriction information comprising an account of a user
obtaining device location indicating a creation location at which the user device is located, a creation time information during which the first location-specific card identifier is generated, and a restriction information comprising an account of a user
in response to receiving the user inputs, generating the location-specific card identifier that corresponds to (i) the location information and (ii) the creation time information;
generating the first location-specific card identifier
generating the first location-specific card identifier
selecting between an inactive state and an active state for the location-specific card identifier
in response to selecting the active state for the location-specific card identifier, subsequent to storing the location-specific card identifier, generating for display, the location-specific card identifier on a second user interface of the user device in response to detecting that the user device is at a location corresponding to the first location
Claim 6
presenting, using an electrophoretic display of the card, information regarding the first location-specific card identifier based on the first location-specific card identifier being in the active state
Claim 6
presenting, using an electrophoretic display of the card, information regarding the first location-specific card identifier based on the first location-specific card identifier being in the active state
580 and ‘381 do not recite “selecting between an inactive state and an active state for the location-specific card identifier” and “in response to selecting the active state for the location-specific card identifier, [subsequent to storing …]”.
However, ‘508 and ‘381 in combination with US 20200410314 A1 (Stahlhut) recite “selecting between an inactive state and an active state for the location-specific card identifier” and “in response to selecting …” (see Stahihut, para. 73 and 77).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine location specific card identifier with the location based transaction security of Stahlhut because location specific card identifier improves the transaction security by preventing unauthorized access outside present locations as enforced by the card.
Dependent claims 2-4, 6-13 and 15-20 of ‘580 and dependent claims 2-4, 6-13 and 1-20 of ‘381 recite limitations that are essentially same as the limitations of the dependent claims 8-15 and 17-25 of the current application. As such, ‘580 and ‘381 teach the dependent claims 8-15 and 17-25 of the current application.
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 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. (Step 1) The claims recite an apparatus (claim 1), a process (claims 7-15) and an article of manufacture (claims 16-25). For the purposes of this analysis, representative claim 1 (from claims 1, 7 and 16) is addressed. (Step 2A, prong 1) Abstract ideas are in bold below, and represent organizing human activity as a method of creating a token based on a user location and utilizing the token in commerce, as are all a form of commercial or legal interactions and managing personal behavior or relationships or interactions between people.
A system for generating and displaying location-specific card identifiers to access a resource at a corresponding location, the system comprising:
one or more processors and memories comprising instructions that, when executed by the one or more processors, cause operations comprising:
presenting a first user interface, on a user device associated with a user, comprising one or more user interface elements associated with generating the location-specific card identifiers;
obtaining, via user inputs on the first user interface, (i) location information indicating a first location when a location-specific card identifier is generated and (ii) creation time information indicating a time at which the location-specific card identifier is generated;
in response to receiving the user inputs, generating the location-specific card identifier that corresponds to (i) the location information and (ii) the creation time information;
selecting between an inactive state and an active state for the location- specific card identifier; and
in response to selecting the active state for the location-specific card identifier subsequent to storing the location-specific card identifier, generating for display, the location-specific card identifier on a second user interface of the user device in response to detecting that the user device is at a location corresponding to the first location.
(Step 2A prong 2) The additional elements are as follows:
“A system […], the system comprising”, “one or more processors and memories comprising instructions that, when executed by the one or more processors, cause operations comprising”, “presenting a first user interface, on a user device associated with a user, comprising one or more user interface elements associated with […]”, “[obtaining], via user inputs on the first user interface, […]”. The additional elements do not integrate the abstract idea into a practical application as they are no more than “apply it” because they are mere “[u]se of a computer or other machinery in its ordinary capacity for economic or other tasks”, see MPEP 2106.05(f)(2).
“selecting between an inactive state and an active state for the location-specific card identifier”. The additional elements do not integrate the abstract idea into a practical application as it is no more than “apply it” because the claim fails to recite the technological details of how the “one or more processors” selects between “an inactive state and an active state for the location-specific card identifier”, see MPEP 2106.05(f)(1).
“… storing the location-specific card identifier, [generating] for display, […] on a second user interface of the user device in response to detecting that the user device is at a location corresponding to the first location”. “storing the location-specific card identifier” and “display, […] on a second user interface of the user device” do not integrate the abstract idea into a practical application as they are no more than “apply it” because they are mere “[u]se of a computer or other machinery in its ordinary capacity for economic or other tasks”, see MPEP 2106.05(f)(2). Furthermore, “detecting that the user device is at a location corresponding to the first location” does not integrate the abstract idea into a practical application as it is no more than “apply it” because the claim fails to recite the technological details of how the “the user device” is detected “at a location corresponding to the first location”, see MPEP 2106.05(f)(1).
(Step 2B) 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 integration into a practical application, the additional elements do no more than provide mere instructions to apply the abstract idea using “a computer or other machinery in its ordinary capacity for economic or other tasks”, see MPEP 2106.05(f)(2), and/or the claim fails to recite the technological details of “how a solution to a problem is accomplished”, see MPEP 2106.05(f)(1). Therefore, the claim elements when considered separately and in an ordered combination, do not add significantly more than implementing the abstract idea of creating a token based on a user location and utilizing the token in commerce.
Continuing the analysis with dependent claims 8 and 17, the claims recited “selecting, from a set of stored location-specific card identifiers, the location- specific card identifier to be generated for display, based at least in part on the location-specific card identifier determined to be in the active state”, additional details which further narrow the abstract idea and additional elements of:
“selecting, […] for display, based at least in part on [the location-specific card identifier] determined to be in the active state”. The additional elements do not integrate the abstract idea into a practical application as they are no more than “apply it” because the claim fails to recite the technological details of how “… card identifier” is selected based on the card identifier “determined to be in the active state”, see MPEP 2106.05(f)(1).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration into a practical application, the additional elements do no more than provide mere instructions to apply the abstract idea using “a computer or other machinery in its ordinary capacity for economic or other tasks”, see MPEP 2106.05(f)(2), and/or the claim fails to recite the technological details of “how a solution to a problem is accomplished”, see MPEP 2106.05(f)(1). Therefore, the claim elements when considered separately and in an ordered combination, do not add significantly more than implementing the abstract idea of creating a token based on a user location and utilizing the token in commerce.
Dependent claims 10 and 22 recited “generating for display, on the second user interface of the user device, one or more graphical elements depicting the location-specific card identifier”, additional details which further narrow the abstract idea and additional elements.
The additional elements of:
“generating for display, on the second user interface of the user device, one or more graphical elements” do not integrate the abstract idea into a practical application as they are no more than “apply it” because they are mere “[u]se of a computer or other machinery in its ordinary capacity for economic or other tasks”, see MPEP 2106.05(f)(2).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration into a practical application, the additional elements do no more than provide mere instructions to apply the abstract idea using “a computer or other machinery in its ordinary capacity for economic or other tasks”, see MPEP 2106.05(f)(2), and/or the claim fails to recite the technological details of “how a solution to a problem is accomplished”, see MPEP 2106.05(f)(1). Therefore, the claim elements when considered separately and in an ordered combination, do not add significantly more than implementing the abstract idea of creating a token based on a user location and utilizing the token in commerce.
Dependent claim 25 recited “wherein the user interface is a user payment terminal”, additional details which further narrow the abstract idea and additional elements.
The additional elements of:
“the user interface is a user payment terminal” do not integrate the abstract idea into a practical application as they are no more than “apply it” because they are mere “[u]se of a computer or other machinery in its ordinary capacity for economic or other tasks”, see MPEP 2106.05(f)(2).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration into a practical application, the additional elements do no more than provide mere instructions to apply the abstract idea using “a computer or other machinery in its ordinary capacity for economic or other tasks”, see MPEP 2106.05(f)(2), and/or the claim fails to recite the technological details of “how a solution to a problem is accomplished”, see MPEP 2106.05(f)(1). Therefore, the claim elements when considered separately and in an ordered combination, do not add significantly more than implementing the abstract idea of creating a token based on a user location and utilizing the token in commerce.
Analysis of dependent claims 9, 11-15, 18-21 and 23-24, recited additional details which only further narrow the abstract idea and do not add any additional features, alone or in combination, that would provide a practical application or provide significantly more.
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 and 7-25 are rejected under 35 USC 103 as being unpatentable over US 20200410314 A1 (Stahlhut) in view of US 20210182833 A1 (Singh).
As to claim 1, 7 and 16,
Stahlhut recites,
presenting a first user interface, on a user device associated with a user, comprising one or more user interface elements (FIG. 900, item 902, para. 183 “present… sensitive data stored on smart card”) associated with generating location-specific card identifiers (para. 90 “The processor may activate sensitive data based on a location of the smart card”, para. 93, 95 “the sensitive data presented by the smart card may include information typically included on a conventional credit or debit cards. Such information may include a card number”);
obtaining, via user inputs on the first user interface, (i) location information indicating a first location when a location-specific card identifier is generated and (ii) creation time information indicating a time at which the location-specific card identifier is generated (para. 63 “Establishing the communication link may confirm that the smart card is within a predetermined distance of the mobile device”, para. 71 “sensitive data stored on the smart card may be activated. For example, the location of the mobile device may correspond to a known location of a medical office. In such a known location, the mobile device may authorize activation of sensitive data”, para. 73 “The one-time code may be used for a single transaction in a specific location and/or within a specific time interval. The one-time code may be generated based on sensitive data stored on the smart card”);
in response to receiving the user inputs, generating the location-specific card identifier that corresponds to (i) the location information and (ii) the creation time information (para. 73 “para. 73 “The one-time code may be used for a single transaction in a specific location and/or within a specific time interval. The one-time code may be generated based on sensitive data stored on the smart card”);
selecting between an inactive state and an active state for the location-specific card identifier (para. 77 “the smart card may receive an override instruction from the mobile phone. The override instruction may activate otherwise inactive second sensitive data stored on the smart card”, para. 73 “The one-time code may be used for a single transaction in a specific location and/or within a specific time interval. The one-time code may be generated based on sensitive data stored on the smart card”); and
in response to selecting the active state for the location-specific card identifier (para. 77) subsequent to storing the location-specific card identifier (para. 88 “The smart card may include a processor circuit… sensitive data may be stored in the processor circuit ”), [generating for display, the location-specific card identifier on a second user interface of the user device in response to detecting that the user device is at a location corresponding to the first location].
Stahlhut does not teach,
[subsequent …], generating for display, the location-specific card identifier on a second user interface of the user device in response to detecting that the user device is at a location corresponding to the first location.
however, Singh teaches,
[…], generating for display (para. 29 “a graphical user interface (GUI), configured to provide an interface to the user when accessing transaction processor 130, where the user or other users may interact with the GUI to more easily view and communicate information”), the location-specific card identifier on a second user interface of the user device in response to detecting that the user device is at a location corresponding to the first location (para. 18 “providing a payment for transaction processing at a location. Payment card 110 may be configured to determine if the location is an authorized location. If so, payment card 110 may allow the card data to be read by card reader”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the location based transaction security of Stahlhut with the location restricted access enforced by the smart card of Singh because the location restricted access enforced by the smart card improves the transaction security by preventing unauthorized access outside present locations as enforced by the card (see Singh, para. 10).
Additionally, with respect to claim 1,
Stahlhut also teaches,
a system …, the system (para. 40) comprising,
one or more processors and memories comprising instructions that, when executed by the one or more processors, cause operations (para. 40) comprising
Additionally, with respect to claim 16,
Stahlhut also teaches,
one or more non-transitory computer-readable media comprising instructions that, when executed by one or more processors, cause operations (para. 51) comprising.
As to claims 8 and 17, combination of Stahlhut and Singh teach all the limitations of claims 7 and 16.
Stahlhut does not teach,
selecting, from a set of stored location-specific card identifiers, the location-specific card identifier to be generated for display, based at least in part on the location-specific card identifier determined to be in an active state.
however, Singh teaches,
selecting, from a set of stored location-specific card identifiers, the location-specific card identifier to be generated for display, based at least in part on the location-specific card identifier determined to be in an active state (para, 22).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the location based transaction security of Stahlhut with the location restricted access enforced by the smart card of Singh because the location restricted access enforced by the smart card improves the transaction security by preventing unauthorized access outside present locations as enforced by the card (see Singh, para. 10).
As to claims 9 and 21, combination of Stahlhut and Singh teach all the limitations of claims 7 and 16.
Stahlhut also teaches,
receiving a request to generate the location-specific card identifier (para. 90);
in response to receiving the request, presenting the first user interface, on the user device associated with the user (para. 90).
As to claims 10 and 22, combination of Stahlhut and Singh teach all the limitations of claims 7 and 16.
Stahlhut also teaches,
generating for display, on the second user interface of the user device, one or more graphical elements depicting the location-specific card identifier (para. 90).
As to claims 11 and 24, combination of Stahlhut and Singh teach all the limitations of claims 7 and 16.
Stahlhut also teaches,
generating for display, on the second user interface of the user device, a message associated with use of the location-specific card identifier (para. 90).
As to claim 12, combination of Stahlhut and Singh teach all the limitations of claim 7.
Stahlhut also teaches,
wherein the first user interface is the same as the second user interface (para. 90).
As to claim 23, combination of Stahlhut and Singh teach all the limitations of claim 16 and 22.
Stahlhut also teaches,
wherein the user interface is the same as the second user interface (para. 90).
As to claims 13 and 18, combination of Stahlhut and Singh teach all the limitations of claims 7 and 16.
Stahlhut also teaches,
wherein the location information is a geographic location (para. 90, 93), and wherein generating the location-specific card identifier (para. 90, 93) further comprises:
determining the geographic location corresponding to a creation location at which the user device is located when the location-specific card identifier is generated (para. 90, 93); and
generating the location-specific card identifier based on the geographic location (para. 90, 93).
As to claims 14 and 19, combination of Stahlhut and Singh teach all the limitations of claims 7 and 16.
Stahlhut also teaches,
wherein the location information is a user-defined location (para. 90, 93),
wherein generating the location-specific card identifier (para. 90, 93) further comprises:
receiving the user-defined location via the first user interface (para. 90, 93);
generating the location-specific card identifier based on the user-defined location (para. 90, 93).
As to claims 15 and 20, combination of Stahlhut and Singh teach all the limitations of claims 7 and 16.
Stahlhut also teaches,
wherein the location information is a merchant location (para. 90, 93),
wherein generating the location-specific card identifier (para. 90, 93) further comprises:
determining the merchant location based on a merchant identifier associated with a request (para. 90, 93);
generating the location-specific card identifier based on the merchant location (para. 90, 93).
As to claim 25, combination of Stahlhut and Singh teach all the limitations of claim 16 and 24.
Stahlhut also teaches,
wherein the user interface (para. 90) is a user payment terminal (FIG. 7, item 701, para. 177 “merchant POS terminal”).
Conclusion
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.
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