DETAILED ACTION
Claims 1-20 are presented on 08/28/2024 for examination on merits. Claims 1, 8, and 15 are independent base claims.
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 .
Examiner's Instructions for filing Response to this Office Action
When the Applicant submits amendments regarding to the claims in response the Office Action, the Examiner would appreciate Applicant if a clean copy of the claims is provided to facilitate the prosecution which otherwise requires extra time for editing the marked-up claims from OCR.
Please submit two sets of claims:
Set #1 as in a typical filing which includes indicators for the status of claim and all marked amendments to the claims; and
Set #2 as an appendix to the Arguments/Remarks for a clean version of the claims which has all the markups removed for entry by the Examiner.
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.
First,
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12088729, hereinafter “USPAT 729”.
Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim the same subject matter of validating a merchant system by using a generated a key-hash pair.
Regarding claim 1, USPAT 729 anticipates:
A computer-implemented method for validation of a merchant system (USPAT 729, CLM. 1: a method for merchant system identity validation), the method comprising:
receiving, by the merchant system, a primary key from an access management system (USPAT 729, CLM. 1: a primary key is transmitted from an access management system to the merchant system);
in response to receiving the primary key, transmitting, by the merchant system, a request for a hash value to the access management system (USPAT 729, CLM. 1: receiving, by the access management system, an authorization request; CLM. 4: wherein the hash value is generated in response to a request for a hash value from the merchant system);
receiving, by the merchant system, the hash value from the access management system (USPAT 729, CLM. 1: the hash value is received by the merchant system as it is transmitted by the access management system … to the merchant system);
generating, by the merchant system, a key-hash pair using the primary key and the hash value (USPAT 729, CLMS. 1 and 6: the hash pair as generated; wherein the key-hash pair comprises the primary key and the hash value transmitted to the merchant system.); and
transmitting, by the merchant system, an authorization request to the access management system, wherein the authorization request includes transaction data and the key-hash pair, and wherein the merchant system is validated based on determining that the key-hash pair matches a reference key-hash pair stored in a validation database (USPAT 729, CLM. 1: an authorization request transmitted by the merchant system [is] received by the access management system, [the authorization request] comprising a key-hash pair; determining, by the access management system, whether the key-hash pair matches a reference key-hash pair stored in a validation database; and transmitting, by the access management system, the authorization request to an acquirer processor based on validating the key-hash pair).
Independent claims 8 and 15 are rejected for the same reason as claim 1, because they each recite the same limitations as claim 1 in similar language.
Regarding dependent claims 2-7, 9-14, and 16-20 of the present application, they are obvious variants of the same subject matter as found in the reference application, and thereby rejected under the judicially created doctrine of obviousness-type double patenting.
Secondly,
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11722311, hereinafter “USPAT 311”.
Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim the same subject matter of validating a merchant system by using a generated a key-hash pair.
Regarding claim 1, USPAT 311 anticipates the instant application because USPAT 3111 specifies a computer-implemented method for validation of a merchant system, wherein the primary key to the merchant system is transmitted from the access management system to the merchant system. Then an authorization request is received from the merchant system at the access management system comprising a key-hash pair, which is used to determine whether the key-hash pair matches the reference key-hash pair stored in the validation database. USPAT 311 discloses all the features and elements and performs the same identity validation function of claim 1.
Independent claims 8 and 15 are rejected for the same reason as claim 1, because they each recite the same limitations as claim 1 in similar language.
Regarding dependent claims 2-7, 9-14, and 16-20 of the present application, they are obvious variants of the same subject matter as found in the reference application, and thereby rejected under the judicially created doctrine of obviousness-type double patenting.
Thirdly,
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11283621, hereinafter “USPAT 621”.
Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim the same subject matter of validating a merchant system by using a generated a key-hash pair.
Regarding claim 1, USPAT 621 anticipates the instant application because USPAT 3111 specifies a computer-implemented method for validation of a merchant system, wherein the primary key is generated by the acess management system and transmitted to the merchant system via the integrator system. Then an authorization request is received at the access management system comprising a key-hash pair, which is used to determine whether the key-hash pair matches the reference key-hash pair stored in the validation database. USPAT 621 discloses all the features and elements and performs the same identity validation function of claim 1.
Independent claims 8 and 15 are rejected for the same reason as claim 1, because they each recite the same limitations as claim 1 in similar language.
Regarding dependent claims 2-7, 9-14, and 16-20 of the present application, they are obvious variants of the same subject matter as found in the reference application, and thereby rejected under the judicially created doctrine of obviousness-type double patenting.
Allowable Subject Matter
Claims 1-20 are allowable over prior art for the following reasons:
Independent claims 1, 8, and 15 each repeat a substantial portion of the allowable subject matter of the parent case Application No. 18/335298, filed 06/15/2023, now U.S. Patent # 12088729. The features of sending a primary key to the merchant system from an access management system for generating, by the merchant system, a key-hash pair and validating the merchant system based on determining that the key-hash pair matches a reference key-hash pair stored in a validation database, in combination with the other limitations in the claim(s), are not anticipated by, nor made obvious over the prior art of record. Therefore, independent claims are allowable.
Dependent claims 2-7, 9-14, and 16-20 are allowed by virtue of their dependencies on claims 1, 8, and 15 as they further limit the scope of the claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure as the prior art additionally discloses certain parts of the claim features (See “PTO-892 Notice of Reference Cited”).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DON ZHAO whose telephone number is (571)272.9953. The examiner can normally be reached on Monday to Friday, 7:30 A.M to 5:00 P.M EST.
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/Don G Zhao/Primary Examiner, Art Unit 2493 01/28/2026