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 .
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).
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Claims 1, 19, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim1 of U.S. Patent No. 12165123 in view of DO US 8812014. Patent 12165123 teaches claims 1, 19, and 20. A system for facilitating selection of a transaction mode for an electronic transaction, the system comprising: a processor; and a memory including instructions that, when executed by the processor, cause the processor to perform operations, the operations including:
obtaining user identification information, the user identification information identifying a user of a user device, the user device performing the electronic transaction (See claim 1 “obtaining user identification information, the user identification information identifying a user of the user device, the user device performing the electronic transaction”);
determining a plurality of user accounts of the user based on the user identification information (see claim 1 “determining a plurality of user accounts of the user based on the user identification information”;
obtaining location information of the user device, the location information being determined by a global positioning satellite device included in the user device (see “obtaining location information of the user device, the location information of the user device including positioning information determined by a global positioning satellite device included in the user device,”;
obtaining at least one of sound information detected by a microphone of the user device or light information detected by a camera of the user device (see claim 10 “wherein the location information of the user device further includes at least one of sound information detected by a microphone of the user device or light information obtained by a camera of the user device”); determining a single merchant based on the location information of the user device (see claim 1 “selecting a selected merchant from among a plurality of merchants based on a number of changes in direction in the position-trace”) […];
analyzing the plurality of user accounts and determining, based on the single merchant, a recommended user account from among the plurality of user accounts (see claim 1, “analyzing the plurality of user accounts; and determining, based on a result of the analyzing and the selected merchant, a recommended user account from among the plurality of user accounts”); and
generating a notification to be displayed on the user device based on the recommended user account (see claim 1, “generating a notification to be displayed on the user device, the notification configured to be used to complete the electronic transaction using the recommended user account”).
Patent 12165123 does not, however US 8812014 to Do, does teach: and the at least one of the sound information or the light information (see col. 10, ll. 41-60, Col. 6, ll. 28-33);
It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to include in the payment account recommendation system of Patent 12165123 the ability to determine location based on sound as in Do because one of ordinary skill in the art at the effective filing date of the invention would have been motivated to make this combination so that location information could be determined in other ways besides GPS.
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) 1, 13, and 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kumaraguyuparan (herein Kumara) US 2016/0328698 in view of Do US 8812014.
As per claim 1:
Kumara discloses system for facilitating selection of a transaction mode for an electronic transaction, the system comprising: a processor (¶ [0129]); and a memory including instructions that, when executed by the processor, cause the processor to perform operations, the operations including (¶ [0129]):
obtaining user identification information, the user identification information identifying a user of a user device, the user device performing the electronic transaction (¶¶ [0071], [0074]);
determining a plurality of user accounts of the user based on the user identification information (Fig. 3, ‘241’, ¶¶ [0070]-[0075]);
obtaining location information of the user device, the location information being determined by a global positioning satellite device included in the user device ([0072], ‘263’ of fig. 1, see also Fig 3 ‘241’, [0070]-[0075]);
determining a single merchant based on the location information of the user device (Fig. 3 ‘247’, ¶¶ [0074]-[0080], [0091], [0099] & [0131], [0026]-[0027], [0058], [0055] default account);
analyzing the plurality of user accounts and determining, based on the single merchant, a recommended user account from among the plurality of user accounts
(Fig 3 ‘249’, ¶¶ [0055] default account, [0058], [0073]); and
generating a notification to be displayed on the user device based on the recommended user account (¶¶ [0073], [0074] See [0096]; see also [0098]-[0099] & [0100]-[0104]).
Kumara fails to explicitly disclose but Do does disclose obtaining at least one of sound information detected by a microphone of the user device or light information detected by a camera of the user device; and the at least one of the sound information or the light information (col. 10, ll. 41-60, Col. 6, ll. 28-33)
Do teaches that location information can be determined by detecting sound using the microphone of a mobile device. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to include in the payment account recommendation system of Kumara the ability to determine location based on sound as in Do because the claimed invention is merely a combination of old elements, and in the combination the elements would perform the same function as they do separately. One of ordinary skill in the art at the effective filing date of the invention would have been motivated to make this combination so that location information could be determined in other ways besides GPS.
As per claims 19 and 20:
Claims 19 and 20 are rejected under the rationale of claim 1.
As per claim 13: Kumara further discloses the system according to claim 1, wherein the analyzing includes: determining at least one account parameter associated with each of the plurality of user accounts (¶ [0049]); and assigning a score to each of the plurality of user accounts based on the associated at least one account parameter (¶ [0049]).
As per claim 15: Kumara further discloses the system according to claim 1, wherein the recommended user account is determined from among the plurality of user accounts based on the analyzing, and further based on the location information of the user device (¶ [0073).
As per claim 16: Kumara further discloses the system according to claim 15, wherein the operations further include: excluding, from the recommended user account, at least one of the plurality of user accounts based on the location information of the user device (¶ [0073]).
As per claim 17: Kumara further discloses the system according to claim 1, wherein the user identification information and the location information are received from the user device via a network, the notification is configured to be transmitted to the user device via the network, and the notification is further configured to be displayed on a display of the user device (¶¶ [0071]-[0074], [0029]).
As per claim 18: Kumara further discloses the system according to claim 1, wherein each of the processor and the memory is included in the user device (¶ [0129]).
Claims 12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Kumara in view Do in further view of Mills; Benjamin Eroe et al. (US 2015/0302383 Al) hereinafter Mills.
As per claim 12: Kumara fails to explicitly disclose, but Mills does disclose the system according to claim 1, wherein the analyzing includes: determining at least one transaction mode that is accepted by the single merchant (¶ [0040]); and excluding, from the recommended user account, accounts of the plurality of user accounts that do not correspond to the at least one transaction mode that is accepted by the single merchant (¶ [0040]). Mills teaches that the transaction modes preferred or accepted by the merchant can be used to exclude payment methods that don't fit this merchant criteria. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to include in the payment account recommendation system of Kumara the exclusion of accounts not accepted by the merchant as in Mills because the claimed invention amounts to a combination of old elements that are directed to the same problem, and in the combination the old elements would perform the same function as they do separately. One of ordinary skill in the art at the effective filing date of the invention would have been motivated to make this combination so that users would not have to endure the friction associated with initially choosing a payment method that is not accepted by the merchant and having to determine a different payment method that is accepted by the merchant.
As per claim 14: Kumara fails to explicitly disclose, but Mills does disclose the system according to claim 1, wherein the analyzing includes: receiving, from the single merchant, at least one merchant-defined parameter associated with at least one transaction mode accepted by the single merchant (¶ [0030]); determining whether the at least one transaction mode corresponds to any of the plurality of user accounts (¶ [0040]); and in response to determining that the at least one transaction mode corresponds to any of the plurality of user accounts, further analyzing the plurality of user accounts based on the at least one merchant-defined parameter (¶¶ [0040]-[0041]).
Mills teaches that the transaction modes preferred or accepted by the merchant can be used to further analyze the payment accounts available. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to include in the payment account recommendation system of Kumara the exclusion of accounts not accepted by the merchant as in Mills because the claimed invention amounts to a combination of old elements that are directed to the same problem, and in the combination the old elements would perform the same function as they do separately. One of ordinary skill in the art at the effective filing date of the invention would have been motivated to make this combination so that the merchant-defined parameter could preside over which payment accounts to recommend because the transaction won't occur without the merchant agreeing to it.
As per claims 2-11: Claims 2-11 are potentially allowable due to the lack of prior art disclosing at least “wherein the at least one of the sound information or the light information is obtained in response to the single merchant being unable to be determined from among plural merchants based on the location information of the user device” in claim 2 and “the at least one of the sound information or the light information is obtained after the electronic transaction is initiated and in response to the single merchant being unable to be determined from among the plural merchants” in claim 3. The dependent claims 4-11 all dependent through both claims 2 and 3.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Grenier US 2016/0092923 Mizhen US 2016/0196549
Hui US 20130045751 – This reference teaches “rough” navigation to a first location (see ¶ [0040]) and then leveraging visual cues to final locations (see ¶ [0043]-[0051]), but does not discuss being unable to be determined from among plural merchants based on the location information.
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/DAVID P SHARVIN/Primary Examiner, Art Unit 3692