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 are objected to because the unlabeled arrows shown in the drawings should be provided with descriptive text labels. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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. 12,130,896. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of the instant application are anticipated by claims 1-20 of the parent application now U.S. Patent 12,130,896, respectively.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7, 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 7 and 17 recite the limitation "the apparatus". There is insufficient antecedent basis for this limitation in the claim.
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) 1-5, 8, 11-15, 18, 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
Szoke et al. (US 2018/0240121) hereafter Szoke.
1. Szoke discloses a system of trust configured for authorizing one or more data transfers, the comprising:
a non-transient computer-readable storage medium having executable instructions embodied thereon (fig 6 and corresponding text); and
one or more hardware processors configured to execute the instructions (fig 6 and corresponding text) to:
receive, from a data transfer system, a data transfer authorization request, the data transfer authorization request being based on a data transfer initiated by a customer computing device associated with a customer (para 35; a transactor 2 originates a transaction utilizing a physical token 4 obtained from an account owner 6 of the physical token 4. In a preferred embodiment, the physical token 4 is a device or card that contains credentials used in the processing of the transaction, wherein the credentials from the physical token 4 are linked to the account holder 6; para 37, Step 102 the transaction platform 30 communicates the transaction details and the credentials provided by the physical token 4 [applicant’s specification states “a data transfer, such as a transaction”]);
determine that the customer computing device has a defined trust relationship with one or more trustee computing devices (para 38, 45, the verification process owner 12 identifies the account owner 6 associated with the credentials from the physical object 4 );
when the customer computing device has the defined trust relationship with the one or more trustee computing devices:
send a third-party second-factor authentication message to the one or more trustee computing devices without sending any message to the customer computing device (para 38, 45, the verification process owner initiates an autonomous identify verification request to the account owner 6 to verify that the account owner 6 is authorized the transaction initiated at step 100 by the transactor 2. In one embodiment, the identity verification request is transmitted as a unique code to the account owner 6 associated with the credentials provided by the physical token 4); and
authorize the data transfer system to complete the data transfer request in response to receipt of a third-party authentication confirmation from the one or more trustee computing devices and in the absence of any authentication confirmation from the customer computing device (para 39, step 106 the account owner 6 responds to the identity verification request transmitted by the verification process owner 12 by providing a plurality of personal codes, biometrics and/or digital signatures which are combined with the unique code that were transmitted to the account owner 6. The combined response by the account owner 6 to the verification process owner 12 verifies the identity of the account owner 6 and authorizes the transaction initiated by the transactor 2).
2. Szoke discloses the system of claim 1, wherein the one or more hardware processors are further configured by the instructions to, when the customer computing device has no defined trust relationship with any trustee computing devices: send a first-party second-factor authentication message to the customer computing device; and authorize the data transfer system to complete the data transfer request in response to receipt of a first-party authentication confirmation from the customer computing device.
3. Szoke discloses the system of claim 1, wherein the one or more hardware processors are further configured by the instructions to: determine that the customer computing device has the defined trust relationship with the one or more trustee computing devices by: searching a trust relationship database; and identifying the customer computing device in the trust relationship database (para 35, 38, 45).
4. Szoke discloses the system of claim 1, wherein the one or more hardware processors are further configured by the instructions to: define the trust relationship between the customer computing device and the one or more trustee computing devices so as to define the trust relationship between the customer and one or more trustees (para 35, 38, 45).
5. Szoke discloses the system of claim 1, wherein the one or more hardware processors are further configured by the instructions to, when the customer computing device has the defined trust relationship with the one or more trustee computing devices: authorize the data transfer system to complete the data transfer request in response to receipt of the third-party authentication confirmation and when the customer device is available to provide authorization (para 36, 39, 43).
8. Szoke discloses the system of claim 1, wherein the one or more hardware processors are further configured by the instructions to: prevent authorization of the data transfer request in the absence of receipt of the third-party second-factor authentication confirmation and in response to the determination that the customer computing device has the defined trust relationship with the one or more trustee computing devices (para 36, 39, 43).
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.
Claim(s) 7 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Szoke as applied to claim 1, 11 above, and further in view of Yu et al. (US 11,954,308) hereafter Yu.
7. Szoke discloses the system of claim 1, but does not explicitly disclose wherein the one or more hardware processors are further configured by the instructions to: prior to receiving the data transfer request, receive, from the customer computing device, a trustee initiation request identifying the one or more trustee computing devices to be included in the defined trust relationship with the customer computing device; and prior to receiving the data transfer request, send, from the apparatus, a trustee enrollment confirmation request to the one or more trustee computing devices. However, in an analogous art, Yu discloses prior to receiving the data transfer request, receive, from the customer computing device, a trustee initiation request identifying the one or more trustee computing devices to be included in the defined trust relationship with the customer computing device; and prior to receiving the data transfer request, send, from the apparatus, a trustee enrollment confirmation request to the one or more trustee computing devices (figs. 6A-6T and corresponding text). It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the implementation of Szoke with the implementation of Yu in order to allow to increase effectiveness, efficiency, and user satisfaction when authentication is unable to be performed (col 8, 52-56).
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luu Pham can be reached at 571-270-5002. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES R TURCHEN/Primary Examiner, Art Unit 2439