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 .
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim(s) 1, 2, 4, 5, 7-9, 11-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Powell et al. (US 2015/0127547) hereafter Powell.
1. Powell discloses a method comprising:
receiving, by a data processing computer from an event source, a communication comprising a unique value and data relating to a token (para 108: token requestor 114 may send the token request message to the token service provider 216. Accordingly, the token request message may include token requestor ID, token attributes, token domain restriction controls, PAN to be represented (e.g. replaced) by the token and, optionally, a requested token assurance level);
providing, by the data processing computer to a data matching computer, a message comprising the unique value, wherein the data matching computer, determines that the received unique value matches a stored unique value, and then obtains action data (para 113: payment network 210 may store the association between the PAN and the generated token along with the token assurance level and the data used to generate the token assurance level in the vault 218); and
receiving, by the data processing computer, the action data (para 113: payment network 210 may provide the token to the token requestor 114 in a token request reply message); and
performing, by the data processing computer, an action with respect to the action data (para 114: token requestor 114 may present the token to the merchant 106, who may generate a payment authorization request message including the token).
2. Powell discloses the method of claim 1, wherein the action data comprises control data (para 53).
4. Powell discloses the method of claim 1, wherein the data relating to the token is a token reference identifier (para 108).
5. Powell discloses the method of claim 1, wherein the token is a substitute for a credential (para 108).
7. Powell discloses the method of claim 1, wherein the method further comprises: receiving an authorization request message comprising the token (para 108-114); and applying the action data to the authorization request message (para 108-114).
8. Powell discloses the method of claim 7, wherein the action data comprise control data (para 53).
Claims 9, 11-14, 16 are similar in scope to claims 1-8 and are rejected under similar rationale.
15. Powell discloses the data processing computer of claim 14, wherein the authorization request message comprises an amount (para 60).
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 3, 6, 10, 13, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Powell as applied to claim 1 above, and further in view of Lee et al. (US 2022/0172192) hereafter Lee.
3. Powell discloses the method of claim 1, but does not explicitly disclose wherein the unique value is a nonce. However, in an analogous art, Lee discloses an electronic device supporting mobile payment including wherein the unique value is a nonce (para 173-174). It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the implementation of Powell with the implementation of Lee in order to verify the transaction using the signed nonce (para 173-174).
6. Powell discloses the method of claim 1, but does not explicitly disclose wherein the unique value is a nonce, and the communication comprises a signed nonce, which is provided to the data matching computer along with the nonce. However, in an analogous art, Lee discloses an electronic device supporting mobile payment including wherein the unique value is a nonce, and the communication comprises a signed nonce, which is provided to the data matching computer along with the nonce (para 173-174, the authentication server has both the nonce and signed nonce). It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the implementation of Powell with the implementation of Lee in order to verify the transaction using the signed nonce (para 173-174).
Claims 10, 13, and 17 are similar in scope to claims 3 and 6 and are rejected under similar rationale.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,111,897. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the current application are anticipated by the claims of U.S. Patent No. 12,111,897.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES R TURCHEN whose telephone number is (571)270-1378. The examiner can normally be reached Monday-Friday: 7-3.
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/JAMES R TURCHEN/Primary Examiner, Art Unit 2439