DETAILED ACTION
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 .
1. This is in response to the communications filed on 05 September 2024.
2. Claims 1-20 are pending in the application.
3. Claims 1-5 have been rejected.
4. Claims 6-20 have been allowed.
Information Disclosure Statement
5. The examiner has considered the information disclosure statement (IDS) filed on 05 September 2024.
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.
6. Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,114,161 B2 (hereinafter the ‘161 patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are anticipated by the earlier filed claims of the ‘161 patent in that the claims of the ‘161 patent contain all of the limitations of the instant application. Claims 1-20 of the instant application therefore are not patentably distinct from the earlier filed claims of the ‘161 patent, and as such, are unpatentable for obvious-type double patenting.
The ‘161 patent teaches:
Claim 1, A base station comprising:
a processor [column 31, lines 15-16]; and
a computer readable medium, the computer readable medium comprising code, executable by the processor for performing a method comprising [column 31, lines 15-16]:
transmitting to a mobile device, a first transmission comprising a first session identifier [column 31, lines 15-16];
receiving from the mobile device, a second transmission comprising a second session identifier and a first processing time value [column 31, lines 17-19];
generating a first distance measurement corresponding to a distance between the mobile device and the base station using the first processing time value [column 31, lines 20-23];
transmitting to the mobile device, a third transmission, wherein the mobile device generates a second distance measurement corresponding to the distance between the mobile device and the base station [column 31, lines 24-28];
generating a data element using the first distance measurement, and one or more of the first session identifier, the second session identifier, and/or a mobile device identifier corresponding to the mobile device [column 31, lines 29-33]; and
transmitting the data element to an access device, wherein the access device receives a fourth transmission comprising a first cryptogram generated by the mobile device using the second distance measurement, and one or more of the first session identifier, the second session identifier, and/or the mobile device identifier, and wherein the access device validates the first cryptogram using the data element [column 32, lines 1-8].
Allowable Subject Matter
7. Claims 1-20 are allowed over the prior art.
The following is an examiner’s statement of reasons for allowance:
The closest prior art to the instant application are Griffin US 2019/0037527 A1, Prakash et al US 2017/0270528 A1 (hereinafter Prakash) and Rule et al US 2022/0414648 A1 (hereinafter Rule). Griffin is directed towards a device that can receive a proximity message comprising a base station identifier and a network address. The device can determine that the device is within a particular distance of a base station associated with the base station identifier based, at least in part, on the proximity message [abstract]. Griffin teaches that a proximity message is any type of message that can be used by the mobile device to determine the distance between the base station and the mobile device [0017]. Prakash is directed towards platform and method for determining a confidence level associated with a transaction that utilizes dynamic data [abstract]. Prakash teaches that a mobile device may determine a current location to be associated with a transaction [0082]. Prakash teaches a transaction cryptogram may be generated from dynamic data (e.g., a dynamic key) [0083]. Prakash teaches that the dynamic data and/or transaction data generated from the dynamic data (e.g., cryptogram), and the transaction location may be provided to a terminal device [0084]. Rule is directed towards server-side redirect of uniform resource locators (URLs) generated by contactless cards [abstract]. Rule teaches that an authentication application may successfully decrypt a cryptogram, thereby verifying or authenticating the cryptogram in the request (e.g., by comparing the customer ID that is produced by decrypting the cryptogram to a known customer ID stored in the account database) [0039]. However, the prior art does not disclose, teach or fairly suggest the limitations of “generating a first distance measurement corresponding to a distance between the mobile device and the base station using the first processing time value”, “transmitting to the mobile device, a third transmission, wherein the mobile device generates a second distance measurement corresponding to the distance between the mobile device and the base station”, “generating a data element using the first distance measurement, and one or more of the first session identifier, the second session identifier, and/or a mobile device identifier corresponding to the mobile device” and “transmitting the data element to an access device, wherein the access device receives a fourth transmission comprising a first cryptogram generated by the mobile device using the second distance measurement, and one or more of the first session identifier, the second session identifier, and/or the mobile device identifier, and wherein the access device validates the first cryptogram using the data element”, as recited by independent claim 1. The prior art does not disclose, teach or fairly suggest the limitations of “receiving, by the access device from the mobile device, an account identifier and a first cryptogram”, “verifying, by the access device, the first cryptogram using the account identifier and data in the data element”, “generating, by the access device, an authorization request message comprising the account identifier” and “transmitting, by the access device, the authorization request message to an authorization computer for authorization”, as recited by independent claims 6 and 16.
Any claims not directly addressed are allowed on the virtue of their dependency.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Relevant Prior Art
8. The following references have been considered relevant by the examiner:
A. Dunjic et al US 2019/0108511 A1 directed to cryptography, and more particularly to the generation and exchange of session keys [0001].
B. Rezaei et al US 2020/0389490 A1 directed to preventing relay or replay attacks using time-stamped, localized footprint data [abstract].
C. Lei et al US 2022/0391896 A1 directed to a hosted point-of-sale service that provides the security features of card-present transactions for card-not-present transactions [abstract].
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARAVIND K MOORTHY whose telephone number is (571)272-3793. The examiner can normally be reached M-F 4:30-3:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Catherine Thiaw can be reached at 571-270-1138. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ARAVIND K MOORTHY/Primary Examiner, Art Unit 2407