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 .
DETAILED ACTION
Applicant amendment received on 1/17/25, replacing claims 1-20 with claims 21-40 has been entered.
Priority
Acknowledgment is made of applicant's claim for priority based on of U.S. patent application Ser. No. 17/138,599, filed Dec. 30, 2020. However, it is noted that the specification did not indicate that the parent application matured to patent No. 12,126,615.
Information Disclosure Statement
The examiner reviewed IDS document(s) received on 10/22/24, carefully considering the art cited within the document(s).
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 21-40 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-21 of U.S. Patent No. 12/126,615. Although the claims at issue are not identical, they are not patentably distinct from each other because they either recite a concomitance of the claim features, or they are their obvious modifications; the instant claims are essentially a broader version of the allowed claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
Claim(s) 22 and 29 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The examiner was unable to find the support for the newly introduced limitation:
“wherein browsing the remote site occurs before the remote site requests user credentials to the user”.
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.
Claim(s) 22 and 29 is/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 pre-AIA the applicant regards as the invention.
The limitation “wherein browsing the remote site occurs before the remote site requests user credentials to the user” is not understood. It is not clear whether the phrase should be read as remote site requests user credentials for or remote site requests user credentials of
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.
Claim Rejections - 35 USC § 103
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 21-40 is/are rejected under 35 U.S.C. 103 unpatentable over Jordan (USPUB 20090265276) in view of Rao (USPN 11095641).
Jordan teaches web-based transaction where after compiling the basket, the user selects a payment function activating self-service terminal independent of the smart client. Thereafter, the shop system transfers the basket itself to an identification information, which is assigned to the bank which displays the basket or identification information and outputs an authentication dialog for authentication of the suer. Via this authentication dialog, the user is authenticated based on received payment card and biometric features, see para 29-31. Subsequently, the user has to confirm the transaction in order to authorize the transaction upon which the bank posts the amount necessary for the transaction from an account of the user to an account of the shop provider and the shop is informed that the posting has been carried out (see para 32-33).
The above teaching addresses the limitation of claims 28 and 31-34, most notably the limitation: in response to initiating the first payment transaction, comparing, by the passive MFA server, biometrics data to a user profile model; transmitting, by the passive MFA server via the communications interface to the ACS, a user authentication confidence generated based on the comparison determining, by the ACS, that the user authentication confidence score satisfies a predefined threshold for passively authenticating the user of the user computing device during the current session; and transmitting, by the ACS to the remote site in response to the determination and without conducting an active authentication process with the user, an indication that the user is authenticated for the first payment transaction.
In the above interpretation the examiner made following assumption, the biometric data clearly would be compared with the previously received/enrolled biometric data (a user profile data), the confidence and confidence score: without a specific restricting limitation a skilled in the art would readily appreciate that comparison in computer science utilize numbers and Boolean structures. Lastly, not only specific computing modules/set of instructions could be interpreted as MFA/ACS and even remote site but also, separating computing functionalities to different server would have been (Official Notice is taken) old and well known in the computer science (especially in network and distributing computing) in the art at the time the application was filed offering the predictable benefit of flexibility and customization.
Despite the interpretation/assumption of the examiner there is a main difference between applicant’s invention and the prior art. Specifically, although Jordan teaches biometric authentication, the prior art fails to address the passive biometric. However, such solution would have been obvious to one of ordinary skill in the art at the time the application was filed as illustrated by Rao (user’s authentication by monitoring the user’s biometric attributes and behavior within session, see the Overview: col. 5 lines 25- col. 6 lines 30) given the predictable benefit of authentication, customization and usability.
Lastly, as other similar (system and computer readable medium) claims, a skilled in the art would readily appreciate that computing functionalities are accomplished by using processors executing computing instructions.
Note that Jordan as modified teach browsing followed by (passive biometric) authentication utilizing the authentication threshold. Thus, there is no need to for the remote site requesting user credentials to the user. As a result, implementing such requesting could be done at any point, including after the process is completed, e.g., after the user completed a transaction and attempted to ask for additional access to the remote server requiring additional authentication. Moreover, this additional requesting would not affect the functionality of the invention. In other words, one could argue that having the remote terminal requesting user credentials to the user could have finite number of solutions: requesting before, after or during the browsing, not functionally affect the invention while offering the predictable benefit of customization.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Peter Poltorak whose telephone number is (571) 272-3840. The examiner can normally be reached Monday through Thursday from 9:00 a.m. to 5:00 p.m.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Pwu can be reached on (571) 272-6798. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/PIOTR POLTORAK/Primary Examiner, Art Unit 2433