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 .
Drawings
The drawings as submitted by Applicant on 09/23/2024 have been accepted.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (an abstract idea) without significantly more.
Under 2106.03 Eligibility step 1, it must be considered whether the claims are directed to one of the four statutory classes of invention. In the instant case, claims 1-7 are directed to a system, claims 8-14 are directed to a method, and claims 15-20 are directed towards a computer storage medium for updating stored cardholder account data, each of which falls within one of the four statutory categories of inventions (process/apparatus). Accordingly, the claims will be further analyzed under 2106.04 Eligibility step 2A:
Under 2106.04 Eligibility step 2A(prong 1), it must be considered whether the claims are “directed to” a judicial exception by referring to the groupings of subject matter. 2106.04, certain methods of organizing human activity include fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
Regarding representative independent claim 1, the claim sets forth a system for updating stored cardholder account data, in the following limitations:
Receiving cardholder account update information;
Identifying a plurality of merchants that store cardholder account data;
Associating the new PAN and a stored previous PAN matching the previous PAN;
Generating a merchant update file; and
Prompting a merchant computing device to update the stored cardholder account data
The above-recited limitations set forth an arrangement to update stored cardholder data at a merchant. This arrangement amounts to certain methods of organizing human activity associated with sales activities and commercial interactions. Such concepts have been considered ineligible certain methods of organizing human activity by the Courts (See 2019 Revised Patent Subject Matter Eligibility Guidance).
Under 2106.04 Eligibility step 2A (prong 2), the next step in the eligibility analysis looks at whether the abstract idea is integrated into a practical application. This requires an additional element or combination of additional elements in the claims to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception.
In this instance, the claims recite the additional elements such as:
A computing device comprising a processor and a memory device;
An issuer computer system;
However, these elements do not amount to an improvement in the functioning of a computer or any other technology or technical field, apply the judicial exception with, or by use of, a particular machine, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
In addition, the recitations above are recited at a high level of generality and also do not amount to an improvement in the functioning of a computer or any other technology or technical field, apply the judicial exception with, or by use of, a particular machine, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Independent claims 8, and 15 and dependent claims 2-7, 9-14, and 16-20 also fail to recite elements which amount to an improvement in the functioning of a computer or any other technology or technical field, apply the judicial exception with, or by use of, a particular machine, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. For example, independent claims and dependent claims are directed to the abstract idea itself and do not amount to an integration according to any one of the considerations above.
Step 2B is the next step in the eligibility analyses and evaluates whether the claims recite additional elements that amount to an inventive concept (i.e., “significantly more”) than the recited judicial exception. According to Office procedure, revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be re-evaluated in Step 2B because the answer will be the same.
In Step 2A, several additional elements were identified as additional limitations:
A computing device comprising a processor and a memory device;
An issuer computer system;
These additional limitations, including the limitations in the independent claims and dependent claims, do not amount to an inventive concept because they were already analyzed under Step 2A and did not amount to a practical application of the abstract idea.
For these reasons, the claims are rejected under 35 U.S.C. 101.
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 claims at issue 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 reference 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. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of United States Patent No 12,099,979. Although the claims at issue are not identical, they are not patentably distinct from each other because both applications are directed to systems and methods for updating stored account holder data, as outlined below:
US Patent Number 12,099,979
Application number 18/893491
1. A computer server comprising at least one processor communicatively coupled to a memory device, the at least one processor configured to: receive, from an issuer computer system, cardholder account update information including, for each of a plurality of cardholder accounts, a previous primary account number (PAN) and a new PAN; identify a plurality of merchants that store cardholder account data associated with each of the plurality of cardholder accounts by electronically analyzing transaction data associated with the plurality of cardholder accounts to identify a plurality of card-not-present (CNP) transactions, the plurality of merchants including merchants having initiated one or more of the plurality of CNP transactions with at least one of the plurality of cardholder accounts; associate, within the memory device and for each cardholder account, the new PAN and a stored previous PAN matching the previous PAN; generate a merchant update file for each identified merchant, each merchant update file including the cardholder account update information for one or more cardholder accounts associated with the corresponding identified merchant; transmit each merchant update file to a computing device associated with the corresponding identified merchant; and cause each computing device to update the stored cardholder account data associated with the corresponding merchant update file.
2. The computer server of claim 1, wherein the at least one processor is further configured to: upon completion of updating the stored cardholder account information, cause each computing device to transmit a completion message to the computer server; and receive, from each computing device, the completion message.
3. The computer server of claim 1, wherein the at least one processor is further configured to: receive the plurality of CNP transactions; and identify the plurality of merchants based on at least one predetermined rule and the plurality of CNP transactions.
4. The computer server of claim 3, wherein the at least one predetermined rule is at least one of a total number of transactions associated with a candidate merchant of the plurality of merchants, an average transaction amount associated with the candidate merchant, a number of recurring transactions associated with the candidate merchant, an ecommerce indicator in transaction data associated with the candidate merchant, or a card on file indicator in the transaction data associated with the candidate merchant.
5. The computer server of claim 1, wherein the at least one processor is further configured to: compare, for each cardholder account, the previous PAN to the stored previous PAN; and identify the plurality of merchants associated with each cardholder account based on a match between the previous PAN and the stored PAN.
6. The computer server of claim 1, wherein the at least one processor is further configured to: identify the plurality of merchants based on a date the stored previous PAN was used to make a recurring transaction.
1. A computing device comprising at least one processor communicatively coupled to a memory device, the at least one processor configured to: receive, from an issuer computer system, cardholder account update information including, for each of a plurality of cardholder accounts, a previous primary account number (PAN) and a new PAN; identify a plurality of merchants that store cardholder account data associated with each of the plurality of cardholder accounts by electronically analyzing transaction data associated with the plurality of cardholder accounts; associate, within the memory device and for each cardholder account, the new PAN and a stored previous PAN matching the previous PAN; generate a merchant update file for each identified merchant, each merchant update file including the cardholder account update information for one or more cardholder accounts associated with the corresponding identified merchant; and prompt a merchant computing device associated with the corresponding identified merchant to update the stored cardholder account data associated with the corresponding merchant update file.
2. The computing device of claim 1, wherein the at least one processor is further configured to identify card-not-present (CNP) transactions by electronically analyzing the transaction data.
3. The computing device of claim 1, wherein the plurality of merchants include merchants having initiated one or more CNP transactions with at least one of the plurality of cardholder accounts.
4. The computing device of claim 1, wherein the at least one processor is further configured to transmit each merchant update file to the merchant computing device associated with the corresponding identified merchant.
5. The computing device of claim 1, wherein the at least one processor is further configured to: upon completion of updating the stored cardholder account information, cause each merchant computing device to transmit a completion message to the computing device; and receive, from each merchant computing device, the completion message.
6. The computing device of claim 1, wherein the at least one processor is further configured to: compare, for each cardholder account, the previous PAN to the stored previous PAN; and identify the plurality of merchants associated with each cardholder account based on a match between the previous PAN and the stored PAN.
7. The computing device of claim 1, wherein the at least one processor is further configured to identify the plurality of merchants based on a date the stored previous PAN was used to make a recurring transaction.
The examiner submits that the language as recited in the pending application is similar to that as recited in US Patent number 12,099,979 as shown in the table above, which shows exemplary claims 1-7 of the pending application in view of claims 1-6 of United States Patent Number 12,099,979. For at least the reasoning provided above, a Terminal Disclaimer is required herein.
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Rosano (US 2014/0258099).
Regarding claim 1, the prior art discloses a computing device comprising at least one processor communicatively coupled to a memory device, the at least one processor configured to: receive, from an issuer computer system, cardholder account update information including, for each of a plurality of cardholder accounts, a previous primary account number (PAN) and a new PAN; identify a plurality of merchants that store cardholder account data associated with each of the plurality of cardholder accounts by electronically analyzing transaction data associated with the plurality of cardholder accounts; associate, within the memory device and for each cardholder account, the new PAN and a stored previous PAN matching the previous PAN; generate a merchant update file for each identified merchant, each merchant update file including the cardholder account update information for one or more cardholder accounts associated with the corresponding identified merchant; and prompt a merchant computing device associated with the corresponding identified merchant to update the stored cardholder account data associated with the corresponding merchant update file (see at least paragraphs [0029]-[0032] to Rosano, wherein system 300 facilitates updating stale payment card information. A technical effect of the systems and methods described herein is achieved by storing, by a cardholder, payment card information at a merchant. For example, the cardholder may enter the payment card information using a web browser or may enter the payment card information into a paper form while at the merchant. The payment card information may include information such as an account or card number, an expiration date for the payment card, and/or an account status such as open or closed. The merchant then uses the stored payment card information for periodic, or recurring, transactions. In so doing, the merchant sends 402 an authorization request to acquirer 322 (shown in FIG. 3). Acquirer 322 receives the authorization request and creates 404 a first authorization request message based on information included in the authorization request, such as an identifier, or flag, signifying that the transaction is a recurring payment transaction in which the card is not presented to the merchant).
Regarding claim 2, the prior art discloses the computing device of claim 1, wherein the at least one processor is further configured to identify card-not-present (CNP) transactions by electronically analyzing the transaction data (see at least paragraph [0029] to Rosano, wherein The merchant then uses the stored payment card information for periodic, or recurring, transactions. In so doing, the merchant sends 402 an authorization request to acquirer 322 (shown in FIG. 3). Acquirer 322 receives the authorization request and creates 404 a first authorization request message based on information included in the authorization request, such as an identifier, or flag, signifying that the transaction is a recurring payment transaction in which the card is not presented to the merchant.).
Regarding claim 3, the prior art discloses the computing device of claim 1, wherein the plurality of merchants include merchants having initiated one or more CNP transactions with at least one of the plurality of cardholder accounts (see at least paragraph [0016] to Rosano, wherein systems and methods that facilitate updating, in real time, payment card information stored by a merchant for use in recurring payment transactions in which a card is not presented to the merchant, also called CNP/RP transactions).
Regarding claim 4, the prior art discloses the computing device of claim 1, wherein the at least one processor is further configured to transmit each merchant update file to the merchant computing device associated with the corresponding identified merchant (see at least paragraph [0032] to Rosano, wherein if database 208 does include updated payment card information, server system 202 sends 418 the new payment card information to acquirer 322, which then sends 420 the new payment card information to the merchant. The merchant updates 422 the payment card information stored by the merchant, using the new payment card information).
Regarding claim 5, the prior art discloses the computing device of claim 1, wherein the at least one processor is further configured to: upon completion of updating the stored cardholder account information, cause each merchant computing device to transmit a completion message to the computing device; and receive, from each merchant computing device, the completion message (see at least paragraph [0032] to Rosano, wherein After the payment card information has been updated, the merchant sends 424 a second authorization request to acquirer 322. Acquirer 322 then creates 426 a second authorization request message and sends 428 the second authorization request message to issuer 324 via the interchange network. The second authorization request message includes substantially similar elements as the first authorization request message, as described above. In one embodiment, the second authorization request message may also include a flag signifying that the payment card information has already been updated by the merchant, enabling server system 202 to bypass querying database 208 for new payment card information).
Regarding claim 6, the prior art discloses the computing device of claim 1, wherein the at least one processor is further configured to: compare, for each cardholder account, the previous PAN to the stored previous PAN; and identify the plurality of merchants associated with each cardholder account based on a match between the previous PAN and the stored PAN (see at least paragraph [0032] to Rosano, wherein if database 208 does include updated payment card information, server system 202 sends 418 the new payment card information to acquirer 322, which then sends 420 the new payment card information to the merchant. The merchant updates 422 the payment card information stored by the merchant, using the new payment card information. For example, if the updated account number stored by database 208 differs from the account number stored by the merchant, the merchant will update its stored account number to match the account number stored by database 208).
Regarding claim 7, the prior art discloses the computing device of claim 1, wherein the at least one processor is further configured to identify the plurality of merchants based on a date the stored previous PAN was used to make a recurring transaction (see at least paragraph [0030] to Rosano, wherein Server system 202 queries database 208 (shown in FIG. 2) to determine whether database 208 includes updated payment card information. In one embodiment, database 208 includes payment card information for those payment cards having new information for a predetermined period, such as three months or six months. In an alternative embodiment, database 208 includes payment card information for all payment cards, and server system 202 matches the payment card information included in the first authorization request message with the payment card information stored in database 208).
Regarding claims 8-14, the examiner submits that the language of the method as recited in independent claim 8 and dependent claims 9-14 is similar to that of the system as recited in independent claim 1 and dependent claims 2-7. Claims 8-14 are therefore rejected for the same reasoning as was applied to claims 1-7, supra.
Regarding claims 15-20, the examiner submits that the language of the computer readable medium as recited in independent claim 15 and dependent claims 16-20 is similar to that of the system as recited in independent claim 1 and dependent claims 2-7. Claims 15-20 are therefore rejected for the same reasoning as was applied to claims 1-7, supra.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The examiner has considered all references listed on the Notice of References Cited, PTO-892.
The examiner has considered all references cited on the Information Disclosure Statement submitted by Applicant, PTO-1449.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TALIA F CRAWLEY whose telephone number is (571)270-5397. The examiner can normally be reached on Monday thru Thursday; 8:30 AM-4:30 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fahd A Obeid can be reached on 571-270-3324. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TALIA F CRAWLEY/Primary Examiner, Art Unit 3627