DETAILED ACTION
This communication is responsive to the application # 18/819,771 filed on August 29, 2024. By preliminary amendment Claims 21-40 are pending and are directed toward SYSTEMS AND METHODS FOR CRYPTOGRAPHIC AUTHENTICATION OF CONTACTLESS CARDS.
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 . 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.
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.
Claims 21-23, 34-37, and 39, are rejected under 35 U.S.C. 102(a)(1) as being unpatentable over DUA (US 2014/0172724, Pub. Date: Jun. 19, 2014), hereinafter referred to as DUA.
As per claim 21, DUA teaches A system, comprising:
a server comprising a processor and a memory, the memory of the server containing a plurality of card identifiers (The Personalization File may be a batch file that contains numerous records of credentials that are to be issued to individuals on their wireless device 200, or could be a separate file record for each credential to be issued. In another embodiment, the Personalization File is transmitted to WCM 110 by issuer personalization server 130 which is in communication with issuer cardholder system 120. DUA, [0058]), wherein the server:
receives, from an application executing on a client device, at least one card identifier associated with a card, verifies the at least one card identifier based on a comparison with the plurality of card identifiers, and authenticates the card based on the verification of the at least one card identifier (The use of ENUM presupposes the collection of these records into a central or hierarchical service. According to a preferred embodiment, the resolved Internet address is used to establish secure real-time communication between WCM 110 and the wallet application on wireless device 200 using the Session Initiation Protocol (SIP) (for example, according to the RFC 3261 standard) to transfer encrypted credentials. The issuer WCM 110 may also be used to update credentials or update the status of credentials on wireless device 200. WCM 110 may also be used to authenticate a mobile user's identity in real-time during a transaction. While the use of SIP for such purposes is preferred, alternative application protocols may be used in lieu of SIP while still remaining within the spirit and scope of the present invention. DUA, [0051]).
As per claim 22, DUA teaches the system of claim 21, wherein the plurality of card identifiers are stored in a table (A Replacement field to define the next DNS query object The Order field in the NAPTR record for the wallet service can be set with the highest value since WCM 110 will be selecting a single record that contains the wallet enum service. The high value in the Order field will also reduce the likelihood of other SIP applications cycling through the records and incorrectly trying to communicate with the wallet application. DUA, [0084]).
As per claim 23, DUA teaches the system of claim 22, wherein the table maps the plurality of card identifiers for cycling (A Replacement field to define the next DNS query object The Order field in the NAPTR record for the wallet service can be set with the highest value since WCM 110 will be selecting a single record that contains the wallet enum service. The high value in the Order field will also reduce the likelihood of other SIP applications cycling through the records and incorrectly trying to communicate with the wallet application. DUA, [0084]).
Claims 34 and 39 have limitations similar to those treated in the above rejection, and are met by the references as discussed above, and are rejected for the same reasons of anticipation as used above.
As per claim 35, DUA teaches the method of claim 33, further comprising, prior to verifying the at least one card identifier, cycling, by the server, the plurality of card identifiers (DUA, [0352]).
As per claim 36, DUA teaches the method of claim 35, wherein the server cycles the plurality of card identifiers in an ordered sequence (DUA, [0354]).
As per claim 37, DUA teaches the method of claim 35, wherein the server cycles the plurality of card identifiers in a sequential manner (DUA, [0354]).
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 21-40 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-18 of US patent No. 10,748,138. Although the conflicting claims are not identical, they are not patentably distinct from each other because all elements of claims 21-40 of the instant application correspond to elements of claims 1-18 of US patent No. 10,748,138. The above claims of the present application would have been obvious over claims 1-18 of US patent No. 10,748,138 because each element of the claims of the present application is anticipated by the claims of the US patent No. 10,748,138 and as such are unpatentable for obviousness-type double patenting (In re Goodman (CAFC) 29 USPQ2D 2010 (12/3/1993)).
Claims 21-40 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of US patent No. 11,610,195. Although the conflicting claims are not identical, they are not patentably distinct from each other because all elements of claims 21-40 of the instant application correspond to elements of claims 1-20 of US patent No. 11,610,195. The above claims of the present application would have been obvious over claims 1-20 of US patent No. 11,610,195 because each element of the claims of the present application is anticipated by the claims of the US patent No. 11,610,195 and as such are unpatentable for obviousness-type double patenting (In re Goodman (CAFC) 29 USPQ2D 2010 (12/3/1993)).
Allowable Subject Matter
Claims 24-33, 38, and 40 are indicated as allowable over prior art.
The following is a statement of reasons for the indication of allowable subject matter:
Claims of instant application are of the same scope as allowed claims of US 10,748,138 and US 11,610,195.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLEG KORSAK whose telephone number is (571)270-1938. The examiner can normally be reached on 5:00 AM- 4:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rupal Dharia can be reached on (571) 272-3880. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLEG KORSAK/
Primary Examiner, Art Unit 2492