Detailed Action
Acknowledgements
1. This communication is in response to the original Application No. 18/814,955 filed on 8/26/2024.
2. Claims 1-20 are currently pending and have been fully examined.
3. For the purpose of applying prior art, PreGrant Publications will be referred to
using a four digit number within square brackets, e. g. [0001].
Notice of Pre-AIA or AIA Status
4. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
5. Claim(s) 1, 10 and 16 are objected to because of the following informalities.
Applicant’s claim 1 recites:
receiving, by the first application based on the server verifying the encrypted data, account data;
receiving, by the first application based on the server verifying the encrypted data, account data;
Claims 10 and 16 contains similar language or like deficiencies found in claim 1. Here, Applicant seems to be simply repeating the prior claim limitation. Appropriate correction is required.
Double Patenting
6. 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.
7. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21-40 of U.S. Patent No. 11,544,717 and claims 8-12 and 14-27 of U.S. Patent No. 11,120,453.
8. Although the claims at issue are not identical, they are not patentably distinct from each other because while independent claims 1, 10 and 16 of the instant application are not identical to claims 21, 28 and 35 of U.S. Patent #11,544,717 and claims 8, 15 and 21 of U.S. Patent # 11,120,453, where the wording changes between the instant application and issued patent(s) are minor.
The dependent claims of the instant application also have minor wording changes but would be anticipated by the dependent claims of the issued patent. Therefore, claims 1-20 are rejected on the ground of non-statutory double patenting over claims:
App # 17/382,541 Patent # 11,544,717 Instant Application Claim 1
21. (New) A method, comprising:
receiving, by a processor of a computing device from a contactless card, a uniform resource locator (URL), the URL comprising a cryptogram;
1. A method, comprising:
receiving, by a processor of a computing device from a card, a link directed to a server, wherein a parameter of the link comprises encrypted data;
opening, by an operating system (OS) executing on the processor, an application based on the URL;
opening, by an operating system (OS) executing on the processor, a first application based on the link;
transmitting, by the application, the cryptogram to an authentication server;
accessing, by the first application, the link to provide the encrypted data to the server;
receiving, by the application, a virtual account number from a virtual account number server;
receiving, by the first application based on the server verifying the encrypted data, account data;
copying, by the application, the virtual account number to a clipboard of the OS; and
pasting, by the OS, the virtual account number from the clipboard to a payment field of a form.
communicating, by the first application, the account data to a second application executing on the processor via a feature of the OS.
App # 16/265,937 Patent # 11,120,453 Instant Application Claim 1
8. (Previously Presented) A method, comprising:
receiving, by an application executing on a processor circuit of a computing device from a communications interface of a contactless card, a uniform resource locator (URL) for an authentication server, the URL comprising a cryptogram;
1. A method, comprising:
receiving, by a processor of a computing device from a card, a link directed to a server, wherein a parameter of the link comprises encrypted data;
accessing, by the application executing on the processor circuit, the URL for the authentication server by a first browser tab of a web browser;
opening, by an operating system (OS) executing on the processor, a first application based on the link;
receiving, by the application executing on the processor circuit from a virtual account number server, a virtual account number, an expiration date, and a card verification value (CVV);
accessing, by the first application, the link to provide the encrypted data to the server;
copying, by the application executing on the processor circuit, the virtual account number to a clipboard executing on the processor circuit; and
receiving, by the first application based on the server verifying the encrypted data, account data;
pasting, by an operating system (OS) executing on the processor circuit, the virtual account number from the clipboard to a payment field of a form in a second browser tab of the web browser.
communicating, by the first application, the account data to a second application executing on the processor via a feature of the OS.
9. Therefore, claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21-40 of U.S. Patent No. 11,544,717 and claims 8-12 and 14-27 of U.S. Patent No. 11,120,453. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are “broadening claims.” Therefore, each of the issued patents anticipate the present claims. (NOTE: Applications 18/074,637 and 17/684,780 were also reviewed and considered by the Examiner)
Allowable Subject Matter
10. The following is a statement of reasons for the indication of allowable subject matter:
11. Hansen (US 2014/0304839), Covdy et al., (US 2018/0302400) and Gomez, Sr. et al., (US 9,600,808) are three closet prior art references found in Examiner’s prior art search. The Hansen reference teaches a clipboard in an electronic system protects sensitive data by copying data into a clipboard of an electronic system as an entry and selectively blocking access to the sensitive data. An entry protect status is associated with a clipboard entry that is arranged to store copied data that is sensitive. The Covdy reference teaches information that includes an expiration time and the security device encrypts the information using a private key that is secured in the security device. The memory includes further instructions executable by the processor to cause the system to receive the encrypted information from the security device and to send the encrypted information to the client device. The encrypted information is decryptable by the instance using a public key associated with the private key in response to the client device providing the encrypted information to the instance. Additionally, the Gomez reference teaches a payment card system uses a static payment card identifying number and generates, for each attempted transaction, an authentication cryptogram based at least upon a seed value stored within the payment card and further based upon a temporal signal value that changes for each attempted use of the payment card. Neither the cited Hansen/Covdy/Gomez references teach or suggests accessing, by the first application, the link to provide the encrypted data to the server; receiving, by the first application based on the server verifying the encrypted data, account data; receiving, by the first application based on the server verifying the encrypted data, account data, as recited in Applicant’s claims 1,10 and 16.
Therefore, as no found prior art fairly teaches or suggests Applicant’s recited claim(s) Examiner holds that claims 1-20 would be allowable over the prior art upon the filing of a terminal disclaimer naming U.S. Patent 11,544,717 and U.S. Patent 11,120,453.
Conclusion
12. The prior art made of record and not relied upon is considered pertinent to
Applicant’s disclosure.
Hansen (US 2014/0304839);
Covdy et al., (US 2018/0302400); and
Gomez, Sr. et al., (US 9,600,808)
Any inquiry concerning this communication or earlier communication from the examiner should be directed to Mr. Dante Ravetti whose telephone number is (571) 270-3609. The examiner can normally be reached on Monday - Thursday 9:00am-5:00pm.
If attempts to reach examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. John Hayes may be reached at (571) 272-6708. The fax phone number for the organization where this application or proceeding is assigned is (571) 270-4609.
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/DANTE RAVETTI/Primary Examiner, Art Unit 3697 11/24/2025