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 .
This Office Action responds to the amendment and argument filed by applicant on April 14, 2026, in response to the Office Action mailed on January 14, 2026.
Double Patenting
Claims 1–20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1–20 of patented, commonly owned Patent 12131306 (hereinafter referred as reference application).
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.
Although the conflicting claims are not identical, they are not patentably distinct because the presently claimed invention merely defines an obvious variation of the invention claimed in the reference application.
The judicially created doctrine of obviousness-type double patenting prohibits extension of the right to exclude through claims in a second patent that are not patentably distinct from claims in a first patent. See In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373 (Fed. Cir. 2003); MPEP §§ 804 and 804.02.
With respect to independent claim 1
Claim 1 of patent 12131306 the reference application teaches a method comprising:
executing, by a main processor, an application configured to display screens during a point-of-sale transaction;
receiving, at a secure processor, a request for secure data from the main processor;
instructing the main processor to enter a secure touch mode such that touch events are not transmitted to the main processor;
processing touch events by the secure processor while operating in the secure touch mode;
determining completion of secure data entry; and
instructing the main processor to exit the secure touch mode and enter a pass-through mode wherein subsequent touch events are processed by the main processor.
These limitations correspond to the presently claimed invention, which similarly recites:
receiving point-of-sale information;
receiving a payment trigger;
entering a secure touch mode;
routing secure user inputs to a secure processor;
processing secure payment inputs while operating in the secure touch mode; and
returning the non-secure processor to a pass-through mode after completion of secure payment processing.
The reference claims therefore disclose the same inventive concept of temporarily isolating touchscreen input from a non-secure processor during sensitive payment credential entry and restoring ordinary touchscreen operation after completion of secure processing.
The present claims differ from the reference claims by expressly reciting, for example:
communications with a merchant device;
transmission of payment confirmation to the merchant device;
receipt of touch inputs through a microcontroller;
transmission of touch inputs from the microcontroller to the secure processor;
switching the non-secure processor after receipt of payment confirmation; and
direct communication between the secure processor and a merchant device.
These differences merely represent obvious implementation details of the secure touch architecture already claimed by the reference application. Routing secure touch events through a microcontroller is an obvious hardware implementation for isolating secure and non-secure execution environments.
Likewise, transmitting payment confirmation to a merchant device merely reflects ordinary completion messaging following successful authorization of a payment transaction.
Similarly, direct communications between a secure processor and merchant equipment represent predictable design alternatives routinely employed in secure payment architectures.
Accordingly, independent claim 1 merely defines an obvious variation of reference claim 1 and therefore is not patentably distinct.
Claims 2–7 depend directly or indirectly from claim 1.
Reference claims 9, 10, 16, 18–20 and the remaining claims of Claim Set B collectively teach or render obvious:
requesting secure entry for PIN information;
initiating secure mode during checkout;
secure processor payment processing;
communication with payment systems;
encrypted communications;
receipt of payment information through payment interfaces.
The additional recitations in present claims 2–7 merely specify conventional payment-processing implementations including PIN entry, checkout initiation, payment processing, encrypted communication, and merchant interface communications that would have been obvious design choices to one of ordinary skill implementing the secure touchscreen architecture of the reference claims.
Accordingly, claims 2–7 are not patentably distinct.
With respect to independent claim 8
Reference independent claim 11 recites a consumer terminal comprising:
a touch screen display;
a main processor;
a secure processor;
secure touch mode;
pass-through mode; and
routing touch events to either processor depending upon operating mode.
Present claim 8 merely recites substantially the same secure payment architecture using the alternative terminology of:
customer device;
secure processor;
non-secure processor;
microcontroller; and
secure touch mode.
Substituting a customer device for a consumer terminal and expressly identifying a microcontroller constitutes an obvious implementation variation that would have been readily appreciated by one of ordinary skill in payment terminal design. The claimed architecture performs the identical function of isolating secure payment inputs from the non-secure processor while secure credentials are entered.
Accordingly, claim 8 is not patentably distinct over reference claim 11.
Claims 9–14 merely recite:
PIN entry;
checkout initiation;
secure payment processing;
communications with payment systems;
encrypted communications; and
merchant interface input.
Reference claims 12–16 disclose corresponding payment reader interfaces, secure processor communications, payment processing, secure mode transitions, and confirmation processing.
The differences represent routine engineering choices concerning payment interfaces and communication paths and therefore fail to impart patentable distinction.
With respect to independent claim 15
Reference independent claim 17 teaches:
receiving payment information;
displaying payment interfaces;
transitioning from pass-through mode to secure touch mode;
processing secure touch events;
returning to pass-through mode after secure entry completion; and
communicating with payment systems.
Present claim 15 merely claims substantially the same invention in computer-readable medium format while expressly reciting execution by secure and non-secure processors.
The recited computer-readable medium merely embodies instructions implementing the same secure touchscreen payment workflow claimed by reference claim 17.
Accordingly, claim 15 is not patentably distinct.
Claims 16–20
Claims 16–20 merely recite:
PIN requests;
checkout initiation;
secure payment processing;
communications with payment systems; and
encrypted communications.
Reference claims 18–20 expressly disclose payment system communications and payment confirmation prior to exiting secure touch mode. The remaining distinctions merely represent predictable software implementation details that would have been obvious to one of ordinary skill. Accordingly, claims 16–20 likewise are not patentably distinct.
Both the instant claims and the reference claims are directed to the same inventive concept of securely processing sensitive payment inputs during point-of-sale transactions by temporarily routing touchscreen inputs away from a non-secure processor to a secure processor and restoring ordinary touchscreen routing upon completion of secure payment entry.
The present claims merely recite obvious variations including the use of a microcontroller, merchant-device messaging, confirmation transmission, encrypted communications, and alternative architectural terminology.
These modifications would have been obvious design choices for implementing the same secure touchscreen payment architecture and merely represent predictable variations that do not render the claimed invention patentably distinct from the reference claims.
Accordingly, claims 1–20 are rejected under the judicially created doctrine of obviousness-type double patenting over claims 1–20 of the commonly owned reference application/patent.
Allowable Subject Matter
Claims 1-20 are allowable over prior art. 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).
Response to Arguments
Applicant’s arguments with respect to the pending claim(s) have been considered but are moot in view of new ground of rejection.
Conclusion
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/ROKIB MASUD/Primary Examiner, Art Unit 3627
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