DETAILED ACTION
Response to Amendment
The amendment filed on February 25, 2026 has been entered. Applicant has amended claims 1, 6 and 15. Claims 1-20 remain pending, have been examined and currently stand rejected.
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 .
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.
Continuation
This application is a continuation of U.S. Patent Application No. 17/318,366, filed on May 12, 2021, which is a continuation of U.S. Patent Application No. 15/073,018, filed on March 17, 2016, which claims the benefit of and priority to U.S. Provisional Patent Application No. 62/135,594, filed on March 19, 2015. See MPEP §201.07. In accordance with MPEP §609.02 A.2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application(s). Also, in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application(s) are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Parent Application(s) need not be resubmitted in this application unless Applicant(s) desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A.2.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/29/2026 is in compliance with provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
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 1-18 of U.S. Patent No. 12,159,275. Although the claims at issue are not identical, they are not patentably distinct from each other.
In this instance, claim 1 of the ‘275 patent corresponds to claim 1 of the instant application. Independent claim 1 differs from claim 1 of the ‘275 patent, in part, because claim 1 is broader in scope than claim 1 of the ‘275 patent. For example, although claim 1 of the instant application recites a predefined transaction charge amount, claim 1 does not specify, in the independent claim, that the predefined amount is $0.00 or $0.01. Additionally, claim 1 in the instant application broadly recites verifying, using the decrypted resulting information, that the authentication code was generated by the payment card and wireless transmitted to the mobile device, whereas claim 1 of the ‘275 patent recites the particular manner the authentication code is verified (i.e., comparing, by the card issuer computing system, the revealed information and the decrypted resulting information from the cryptogram to information from a customer database; and verifying, by the card issuer computing system, the authentication code that was generated by the payment card and wirelessly transmitted to the mobile device from the payment card based on the comparison). Claim 1 also fails to explicitly indicate: that the computing system is a card issuer computing system; that the authentication request includes account information associated with the payment card; comparing, by the card issuer computing system, the revealed information and the decrypted resulting information from the cryptogram to information from a customer database; and that the approval of the authentication request is based on the comparison.
It would have been obvious to a person of ordinary skill in the art to modify claim 1 of U.S. Patent No. 12,159,275 to achieve the recited functions found in independent claim 1 of Application no. 18/945,325 (i.e., the instant application) because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
Dependent claim 2 of the instant application describes features pertaining to the contents of the authentication request. An analogous feature is found in claims 1 and 2 of the ’275 patent (i.e., “wherein the authentication request includes account information associated with the payment card”, “wherein the information associated with the payment card comprises at least one of a user name, an address, or a phone number of a user.”). Accordingly, claim 2 is not patentably distinct from claims 1 and 2 of the ‘275 patent.
Dependent claim 3 of the instant application describes verifying that the account information corresponds with an account holder associated with the payment card. An analogous feature is found in claim 1 of the ’275 patent (i.e., “verifying, by the card issuer computing system, the account information”, “comparing, by the card issuer computing system, the revealed information and the decrypted resulting information from the cryptogram to information from a customer database.”). Accordingly, claim 3 is not patentably distinct from claim 1 of the ‘275 patent.
Dependent claim 4 corresponds to features found in claim 1 of the ’275 patent (i.e., “comparing, by the card issuer computing system, the revealed information and the decrypted resulting information from the cryptogram to information from a customer database”, and “verifying, by the card issuer computing system, the authentication code that was generated by the payment card and wirelessly transmitted to the mobile device from the payment card based on the comparison”). Accordingly, claim 4 is not patentably distinct from claim 1 of the ‘275 patent.
Dependent claim 5 corresponds to features found in claim 1 of the ’275 patent (i.e., “determining that the payment transaction includes a transaction charge amount of $0.00 or $0.01”). Accordingly, claim 5 is not patentably distinct from claim 1 of the ‘275 patent.
Independent claim 6 of the instant application corresponds to claim 6 of the ‘275 patent. Claim 6 differs from claim 6 of the ‘275 patent, in part, because it is broader in scope. For example, although claim 6 of the instant application recites a predefined transaction charge amount, claim 6 does not specify, in the independent claim, that the predefined amount is $0.00 or $0.01. Claim 6 also fails to explicitly indicate: that the computing system is a card issuer computing system; and enabling, by the computing system, the mobile pay function for the card for the mobile device to complete mobile pay transactions utilizing the card.
It would have been obvious to a person of ordinary skill in the art to modify claim 6 of U.S. Patent No. 12,159,275 to achieve the recited functions found in independent claim 6 of Application no. 18/945,325 (i.e., the instant application) because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
Dependent claim 7 corresponds to features found in claim 7 of the ’275 patent (i.e., “wherein the authentication request includes customer information and account information in addition to the cryptogram”). Accordingly, claim 7 is not patentably distinct from claim 7 of the ‘275 patent.
Dependent claim 8 corresponds to features found in claim 8 of the ’275 patent. Accordingly, claim 8 is not patentably distinct from claim 8 of the ‘275 patent.
Dependent claim 9 corresponds to features found in claim 1 of the ’275 patent (i.e., “comparing, by the card issuer computing system, the revealed information and the decrypted resulting information from the cryptogram to information from a customer database”, and “verifying, by the card issuer computing system, the authentication code that was generated by the payment card and wirelessly transmitted to the mobile device from the payment card based on the comparison”). Accordingly, claim 9 is not patentably distinct from claim 1 of the ‘275 patent.
Dependent claim 10 corresponds to features found in claim 1 of the ’275 patent (i.e., “determining that the payment transaction includes a transaction charge amount of $0.00 or $0.01”). Accordingly, claim 10 is not patentably distinct from claim 1 of the ‘275 patent.
Dependent claim 11 corresponds to features found in claim 10 of the ’275 patent. Accordingly, claim 11 is not patentably distinct from claim 10 of the ‘275 patent.
Dependent claim 12 corresponds to features found in claim 11 of the ’275 patent. Accordingly, claim 12 is not patentably distinct from claim 11 of the ‘275 patent.
Dependent claim 13 corresponds to features found in claim 12 of the ’275 patent. Accordingly, claim 13 is not patentably distinct from claim 12 of the ‘275 patent.
Dependent claim 14 corresponds to features found in claim 13 of the ’275 patent. Accordingly, claim 14 is not patentably distinct from claim 13 of the ‘275 patent.
Independent claim 15 of the instant application corresponds to claim 14 of the ‘275 patent. Claim 15 differs from claim 14 of the ‘275 patent, in part, because it is broader in scope. For example, although claim 15 of the instant application recites a predefined transaction charge amount, claim 15 does not specify, in the independent claim, that the predefined amount is $0.00 or $0.01. Claim 15 also fails to explicitly indicate: that the authentication request includes account information associated with the payment card; verifying the account information; comparing the decrypted resulting information from the cryptogram to information from the customer database; and enabling the mobile pay function for the payment card for the mobile device to complete mobile pay transactions utilizing the payment card.
It would have been obvious to a person of ordinary skill in the art to modify claim 14 of U.S. Patent No. 12,159,275 to achieve the recited functions found in independent claim 15 of Application no. 18/945,325 (i.e., the instant application) because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
Dependent claim 16 corresponds to features found in claim 15 of the ’275 patent. Accordingly, claim 16 is not patentably distinct from claim 15 of the ‘275 patent.
Dependent claim 17 corresponds to features found in claim 16 of the ’275 patent. Accordingly, claim 17 is not patentably distinct from claim 16 of the ‘275 patent.
Dependent claim 18 corresponds to features found in claims 17 and 18 of the ’275 patent. Accordingly, claim 18 is not patentably distinct from claims 17 and 18 of the ‘275 patent.
Dependent claim 19 corresponds to features found in claim 13 of the ’275 patent. Accordingly, claim 19 is not patentably distinct from claim 13 of the ‘275 patent.
Dependent claim 20 corresponds to features found in claim 14 of the ’275 patent (i.e., “determining that the payment transaction includes a transaction charge amount of $0.00 or $0.01”). Accordingly, claim 20 is not patentably distinct from claim 14 of the ‘275 patent.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,037,139. Although the claims at issue are not identical, they are not patentably distinct from each other.
In this instance, claim 1 of the ‘139 patent corresponds to claim 1 of the instant application. Independent claim 1 differs from claim 1 of the ‘139 patent, in part, because claim 1 is broader in scope than claim 1 of the ‘139 patent. For example, although claim 1 of the instant application recites a predefined transaction charge amount, claim 1 does not specify, in the independent claim, that the predefined amount is $0.00 or $0.01. Additionally, claim 1 in the instant application broadly recites verifying, using the decrypted resulting information, that the authentication code was generated by the payment card and wireless transmitted to the mobile device, whereas claim 1 of the ‘139 patent recites the particular manner the authentication code is verified (i.e., comparing, by the card issuer computing system, the revealed information regarding the user and the decrypted resulting information from the cryptogram to information from a customer database; and verifying, by the card issuer computing system, the authentication code that was generated by the payment card and wirelessly transmitted to the mobile device from the payment card based on the comparison). Claim 1 also fails to explicitly indicate: that the computing system is a card issuer computing system associated with a payment card issuer; that the authentication request includes account information associated with the payment card; verifying, by the card issuer computing system, the account information; revealing, by the card issuer computing system, information regarding a user issued the payment card and a cryptogram from the authentication code; comparing, by the card issuer computing system, the revealed information regarding the user and the decrypted resulting information from the cryptogram to information from a customer database; and that the approval of the authentication request is based on the comparison.
It would have been obvious to a person of ordinary skill in the art to modify claim 1 of U.S. Patent No. 11,037,139 to achieve the recited functions found in independent claim 1 of Application no. 18/945,325 (i.e., the instant application) because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
Dependent claim 2 of the instant application describes features pertaining to the contents of the authentication request. An analogous feature is found in claims 1 and 2 of the ’139 patent (i.e., “wherein the authentication request includes account information associated with the payment card”, “wherein the information associated with the payment card comprises at least one of a user name, an address, or a phone number of a user.”). Accordingly, claim 2 is not patentably distinct from claims 1 and 2 of the ‘139 patent.
Dependent claim 3 of the instant application describes verifying that the account information corresponds with an account holder associated with the payment card. An analogous feature is found in claim 1 of the ’139 patent (i.e., “verifying, by the card issuer computing system, the account information”, “comparing, by the card issuer computing system, the revealed information regarding the user and the decrypted resulting information from the cryptogram to information from a customer database.”). Accordingly, claim 3 is not patentably distinct from claim 1 of the ‘139 patent.
Dependent claim 4 corresponds to features found in claim 1 of the ’139 patent (i.e., “comparing, by the card issuer computing system, the revealed information regarding the user and the decrypted resulting information from the cryptogram to information from a customer database”, and “verifying, by the card issuer computing system, the authentication code that was generated by the payment card and wirelessly transmitted to the mobile device from the payment card based on the comparison”). Accordingly, claim 4 is not patentably distinct from claim 1 of the ‘139 patent.
Dependent claim 5 corresponds to features found in claim 1 of the ’139 patent (i.e., “determining that the payment transaction includes a payment amount of $0.00 or $0.01”). Accordingly, claim 5 is not patentably distinct from claim 1 of the ‘139 patent.
Claim 1 of the ‘139 patent corresponds to claim 6 of the instant application. Independent claim 6 differs from claim 1 of the ‘139 patent, in part, because claim 6 is broader in scope than claim 1 of the ‘139 patent. For example, although claim 6 of the instant application recites a predefined transaction charge amount, claim 1 does not specify, in the independent claim, that the predefined amount is $0.00 or $0.01. Claim 1 also fails to explicitly indicate: that the computing system is a card issuer computing system associated with a payment card issuer; that the authentication request includes account information associated with the payment card; verifying, by the card issuer computing system, the account information; revealing, by the card issuer computing system, information regarding a user issued the payment card and a cryptogram from the authentication code; comparing, by the card issuer computing system, the revealed information regarding the user and the decrypted resulting information from the cryptogram to information from a customer database; that the approval of the authentication request is based on the comparison; and based on the approval message, activating, by the card issuer computing system, the mobile pay function for the payment card that enables the mobile device to complete mobile pay transactions utilizing the payment card.
It would have been obvious to a person of ordinary skill in the art to modify claim 1 of U.S. Patent No. 11,037,139 to achieve the recited functions found in independent claim 6 of Application no. 18/945,325 (i.e., the instant application) because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
Dependent claim 7 corresponds to features found in claims 1 and 2 of the ’139 patent (i.e., “wherein the authentication request includes account information associated with the payment card issued by the payment card issuer”, and “wherein the information regarding the user comprises at least one of a user name, an address, or a phone number.”). Accordingly, claim 7 is not patentably distinct from claims 1 and 2 of the ‘139 patent.
Dependent claim 8 corresponds to features found in claim 2 of the ’139 patent. Accordingly, claim 8 is not patentably distinct from claim 2 of the ‘139 patent.
Dependent claim 9 corresponds to features found in claim 1 of the ’139 patent (i.e., “comparing, by the card issuer computing system, the revealed information regarding the user and the decrypted resulting information from the cryptogram to information from a customer database”, and “verifying, by the card issuer computing system, the authentication code that was generated by the payment card and wirelessly transmitted to the mobile device from the payment card based on the comparison”). Accordingly, claim 9 is not patentably distinct from claim 1 of the ‘139 patent.
Dependent claim 10 corresponds to features found in claim 1 of the ’139 patent (i.e., “determining that the payment transaction includes a payment amount of $0.00 or $0.01”). Accordingly, claim 10 is not patentably distinct from claim 1 of the ‘139 patent.
Dependent claim 11 corresponds to features found in claim 10 of the ’139 patent. Accordingly, claim 11 is not patentably distinct from claim 10 of the ‘139 patent.
Dependent claim 12 corresponds to features found in claim 11 of the ’139 patent. Accordingly, claim 12 is not patentably distinct from claim 11 of the ‘139 patent.
Dependent claim 13 corresponds to features found in claim 12 of the ’139 patent. Accordingly, claim 13 is not patentably distinct from claim 12 of the ‘139 patent.
Dependent claim 14 corresponds to features found in claim 13 of the ’139 patent. Accordingly, claim 14 is not patentably distinct from claim 13 of the ‘139 patent.
Claim 9 of the ‘139 patent corresponds to claim 15 of the instant application. Independent claim 15 differs from claim 9 of the ‘139 patent, in part, because claim 15 is broader in scope than claim 9 of the ‘139 patent. For example, although claim 15 of the instant application recites a predefined transaction charge amount, claim 15 does not specify, in the independent claim, that the predefined amount is $0.00 or $0.01. Claim 15 also fails to explicitly indicate: that the authentication request includes account information associated with the payment card; verifying the account information; revealing information regarding a user issued the payment card and a cryptogram from the authentication code; comparing the revealed information regarding the user and the decrypted resulting information from the cryptogram to information from a customer database; that the approval of the authentication request is based on the comparison; and based on the approval message, activating the mobile pay function for the payment card that enables the mobile device to complete mobile pay transactions utilizing the payment card.
It would have been obvious to a person of ordinary skill in the art to modify claim 9 of U.S. Patent No. 11,037,139 to achieve the recited functions found in independent claim 15 of Application no. 18/945,325 (i.e., the instant application) because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
Dependent claim 16 corresponds to features found in claim 10 of the ’139 patent. Accordingly, claim 16 is not patentably distinct from claim 10 of the ‘139 patent.
Dependent claim 17 corresponds to features found in claim 11 of the ’139 patent. Accordingly, claim 17 is not patentably distinct from claim 11 of the ‘139 patent.
Dependent claim 18 corresponds to features found in claims 9 and 15 of the ’139 patent (i.e., “receive a payment transaction from the mobile device; identify the payment transaction from the mobile device as an authentication request […], wherein the authentication request includes account information associated with a payment card issued by a payment card issuer […]” and “wherein the information regarding the user comprises a unique identifier associated with the mobile device”). Accordingly, claim 18 is not patentably distinct from claims 9 and 15 of the ‘139 patent.
Dependent claim 19 corresponds to features found in claims 1 and 14 of the ’139 patent (i.e., “approve the authentication request based on the comparison and verification” and “wherein verifying the authentication code is further based on the revealed information regarding the user and the information from the mobile device matching”). Accordingly, claim 19 is not patentably distinct from claims 1 and 14 of the ‘139 patent.
Dependent claim 20 corresponds to features found in claim 9 of the ’139 patent (i.e., “determining that the payment transaction includes a payment amount of$0.00 or $0.01”). Accordingly, claim 20 is not patentably distinct from claim 9 of the ‘139 patent.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) 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 at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite “verifying, by the computing system and using the decrypted resulting information, that the authentication code was generated by the payment card and wirelessly transmitted to the mobile device.” Examiner has reviewed applicant’s disclosure and is unable to find support for the entirety of this limitation. In particular, Examiner is unable to find any support describing where it is verified, using the decrypted resulting information, that the authentication code was wirelessly transmitted to the mobile device. Applicant’s disclosure describes decrypting a cryptogram included in an authentication code and then verifying the resulting data and the rest of the information in the authentication code using information in the customer database. See e.g., Specification [0022]; [0025]; [0035]. The disclosure also indicates that it confirms the data from the cryptogram came from, or corresponds to, the smart card and the user. Specification [0025]; [0035]. While the disclosure indicates that the system verifies that the authentication code corresponds to a smart card, there is nothing in applicant’s disclosure that describes, or suggests, that the computing system verifies that the authentication code was wirelessly transmitted to the mobile device [from the payment card].
Independent claims 6 and 15 recite a substantially similar limitation, accordingly claims 6 and 15 are also rejected under 35 U.S.C. 112(a) for the same reasons and rational explained above. Claims 2-5, 7-14 and 16-20 are also rejected under 35 U.S.C. 112(a) based on their dependency to claim 1, 6 or 15.
Claim Rejections - 35 USC § 103
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.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Carpenter et al. (US 2016/0086184 A1) (hereinafter “Carpenter”) in view of Singh et al. (US 2013/0152185 A1) (hereinafter “Singh”) in view of Adrangi et al. (US 2015/0081461 A1) (hereinafter “Adrangi”).
Regarding Claim 1: Carpenter discloses a method of authenticating a payment card for use with a mobile device, the method comprising:
receiving, by a computing system, a transaction from the mobile device (See at least Carpenter [0078]. Carpenter discloses receiving, by a computing system (i.e., server computer), a transaction (i.e., request) from the mobile device.);
identifying, by the computing system, the transaction as an authentication request, wherein the authentication request includes an authentication code (See at least Carpenter [0078-0079]. Carpenter discloses identifying, by the computing system (i.e., server computer), the transaction (i.e., the request) as an authentication request (i.e., as a provisioning request), wherein the authentication request includes an authentication code (i.e., user authentication information, which includes, among other things, a value in a cryptogram).);
processing, by the computing system, the authentication request as a transaction request to reveal a cryptogram (See at least Carpenter [0078-0079]. Carpenter discloses processing (e.g., by verifying), by the computing system (i.e., server computer), the authentication request (i.e., provisioning request) as a transaction request to reveal a cryptogram (i.e., reveal the cryptogram in the user authentication information.);
decrypting, by the computing system, the cryptogram to determine resulting information (See at least Carpenter [0078-0079]. Carpenter discloses decrypting, by the computing system (i.e., by the server computer), the cryptogram to determine resulting information (i.e., to determine a decrypted value in the cryptogram).);
verifying, by the computing system and using the decrypted resulting information, the authentication code (See at least Carpenter [0079]. Carpenter discloses verifying, by the computing system (i.e., by the server computer) and using the decrypted resulting information (i.e., using the decrypted value), the authentication code (i.e., based on ensuring that the value in the cryptogram is an expected value).);
approving, by the computing system, the authentication request based on the verification (See at least Carpenter [0079]. Carpenter discloses approving, by the computing system, the authentication request (i.e., provisioning request) based on the verification (i.e., indicated by the fact that the server begins the provisioning process after the user information (e.g., the cryptogram) is verified).); and
activating, by the computing system, the payment card that enables the mobile device to complete transactions involving the payment card (See at least Carpenter [0079]; [0085]; [0108-0109]. Carpenter discloses activating (i.e., set the token to be an “active” token), by the computing system (i.e., by the server computer), the payment card (i.e., payment credential/token) that enables the mobile device to complete transactions involving the payment card.).
Carpenter does not explicitly disclose: where the received transaction is a “payment” transaction; identifying the payment transaction as an authentication request by determining that the payment transaction includes a predefined transaction charge amount; or processing, based on the predefined transaction charge amount, the authentication request as a transaction request. Singh, on the other hand, teaches:
receiving a payment transaction (See at least Singh [0032]; Fig. 6. Singh teaches receiving a payment transaction (i.e., an EMV payment verification transaction).);
identifying the payment transaction as an authentication request by determining that the payment transaction includes a predefined transaction charge amount (See at least Singh [0032]. Singh teaches identifying the payment transaction as an authentication request by determining (i.e., recognizing) that the payment transaction includes a predefined transaction charge amount (i.e., a nominal or designated amount (e.g., 1 cent)).); and
processing, based on the predefined transaction charge amount, the authentication request as a transaction request (See at least Singh [0032-0034]. Singh teaches processing, based on the predefined transaction charge amount (i.e., based on the nominal or designated amount), the authentication request as a transaction request.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Singh into Carpenter’s method activating a payment credential/token based on a received request. One of ordinary skill in the art would have been motivated to include such features in order to initiate an EMV payment verification transaction with an authentication server to download a secure payment applet (Singh [0032]).
Carpenter also fails to explicitly disclose verifying, by the computing system and using the decrypted resulting information, that the authentication code was generated by the payment card and wirelessly transmitted to the mobile device.
Adrangi, on the other hand, teaches verifying, by the computing system and using the decrypted resulting information, that the authentication code was generated by the payment card and wirelessly transmitted to the mobile device (See at least Adrangi [0042-0043]; [0046-0047]; [0102]; Fig. 1A; Fig. 4 step 425; also see [0059-0062]. Adrangi teaches verifying, by the computing system (i.e., registration processor) and using the decrypted resulting information (i.e., and using the decrypted cryptogram), that the authentication code (i.e., the information in the cryptogram) was generated by the payment card (i.e., generated by the payment instrument) and wirelessly transmitted to the mobile device (i.e., wirelessly transmitted to the card reader in the mobile device, e.g., via NFC radio).).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Adrangi into Carpenter’s method of decrypting a cryptogram and ensuring that the decrypted value is an expected value prior to activating a credential/token. One of ordinary skill in the art would have been motivated to include such features in order to register a payment instrument and to associate the payment instrument with a platform based upon a cryptogram received from the payment instrument via the platform during a registration procedure (Adrangi [0102]).
Regarding Claim 2: The combination of Carpenter, Singh and Adrangi discloses the method of claim 1. Carpenter further discloses wherein the authentication request includes account information associated with the payment card comprising at least one of a name, an address, or a phone number of a user (See at least Carpenter [0078]; [0098]; [0102]; [0164]. Carpenter discloses wherein the authentication request (i.e., provisioning request) includes account information associated with the payment card comprising at least one of a name (i.e., consumer identifier or login information/credentials), an address (i.e., physical address, zip code), or a phone number of a user (i.e., device information to identify the mobile device).).
Regarding Claim 3: The combination of Carpenter, Singh and Adrangi discloses the method of claim 2. Carpenter further discloses further comprising verifying, by the computing system, that the account information corresponds with an account holder associated with the payment card (See at least Carpenter [0078-0079]; [0083]; [0102]; [0170].).
Regarding Claim 4: The combination of Carpenter, Singh and Adrangi discloses the method of claim 2. Carpenter further discloses:
comparing, by the computing system, the account information with information from a customer database of the computing system (See at least Carpenter [0071]; [0098]; [0102]; [0135-0136]; [0170].); and
verifying, by the computing system, the account information based on the comparison of the account information and the information from the customer database (See at least Carpenter [0071]; [0098]; [0102]; [0135-0136]; [0170].).
Regarding Claim 5: The combination of Carpenter, Singh and Adrangi discloses the method of claim 1. Carpenter does not explicitly disclose wherein the predefined transaction charge amount is $0.00 or $0.01. Singh, on the other hand, further teaches wherein the predefined transaction charge amount is $0.00 or $0.01 (See at least Singh [0032] “the EMV transaction may be for a nominal or designated amount (e.g., 1 cent), for example, although in some embodiments a transaction amount is not required”.).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Singh into Carpenter’s method activating a payment credential/token based on a received request. One of ordinary skill in the art would have been motivated to include such features in order to initiate an EMV payment verification transaction with an authentication server to download a secure payment applet (Singh [0032]).
Regarding Claim 6: Carpenter discloses a method of authenticating a card for use with a mobile device, the method comprising:
receiving, by a computing system, a transaction from the mobile device (See at least Carpenter [0078]. Carpenter discloses receiving, by a computing system (i.e., server computer), a transaction (i.e., request) from the mobile device.);
identifying, by the computing system, the transaction as an authentication request, wherein the authentication request includes an authentication code (See at least Carpenter [0078-0079]. Carpenter discloses identifying, by the computing system (i.e., server computer), the transaction (i.e., the request) as an authentication request (i.e., as a provisioning request), wherein the authentication request includes an authentication code (i.e., user authentication information, which includes, among other things, a value in a cryptogram).);
processing, by the computing system, the authentication request as a transaction request to reveal a cryptogram (See at least Carpenter [0078-0079]. Carpenter discloses processing (e.g., by verifying), by the computing system (i.e., server computer), the authentication request (i.e., provisioning request) as a transaction request to reveal a cryptogram (i.e., reveal the cryptogram in the user authentication information.);
decrypting, by the computing system, the cryptogram to determine resulting information (See at least Carpenter [0078-0079]. Carpenter discloses decrypting, by the computing system (i.e., by the server computer), the cryptogram to determine resulting information (i.e., to determine a decrypted value in the cryptogram).);
verifying, using the decrypted resulting information, the authentication code (See at least Carpenter [0079]. Carpenter discloses verifying, using the decrypted resulting information (i.e., using the decrypted value), the authentication code (i.e., based on ensuring that the value in the cryptogram is an expected value).);
approving, by the computing system, the authentication request based on the verification based on the decrypted resulting information from the cryptogram (See at least Carpenter [0079]. Carpenter discloses approving, by the computing system, the authentication request (i.e., provisioning request) based on the verification based on the decrypted resulting information from the cryptogram (i.e., indicated by the fact that the server begins the provisioning process after the user information (e.g., the cryptogram) is verified).);
transmitting, by the computing system and based on the approval, an authentication decision to the mobile device, the authentication decision enabling the mobile device to complete transactions involving the card (See at least Carpenter [0079]; [0085]; [0108-0109]. Carpenter discloses transmitting, by the computing system (i.e., by the server computer) and based on the approval, an authentication decision (e.g., a payment token, personalization data) to the mobile device, the authentication decision enabling the mobile device to complete transactions involving the card.).
Carpenter does not explicitly disclose: where the received transaction is a “payment” transaction; identifying the payment transaction as an authentication request by determining that the payment transaction includes a predefined transaction charge amount; or processing, based on the predefined transaction charge amount, the authentication request as a transaction request. Singh, on the other hand, teaches:
receiving a payment transaction (See at least Singh [0032]; Fig. 6. Singh teaches receiving a payment transaction (i.e., an EMV payment verification transaction).);
identifying the payment transaction as an authentication request by determining that the payment transaction includes a predefined transaction charge amount (See at least Singh [0032]. Singh teaches identifying the payment transaction as an authentication request by determining (i.e., recognizing) that the payment transaction includes a predefined transaction charge amount (i.e., a nominal or designated amount (e.g., 1 cent)).); and
processing, based on the predefined transaction charge amount, the authentication request as a transaction request (See at least Singh [0032-0034]. Singh teaches processing, based on the predefined transaction charge amount (i.e., based on the nominal or designated amount), the authentication request as a transaction request.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Singh into Carpenter’s method activating a payment credential/token based on a received request. One of ordinary skill in the art would have been motivated to include such features in order to initiate an EMV payment verification transaction with an authentication server to download a secure payment applet (Singh [0032]).
Carpenter also fails to explicitly disclose: verifying, using the decrypted resulting information, that the authentication code was generated by the payment card and wirelessly transmitted to the mobile device; and approving the authentication request based on the verification that that the authentication code was generated by the card and wirelessly transmitted to the mobile device from the card.
Adrangi, on the other hand, teaches:
verifying, using the decrypted resulting information, that the authentication code was generated by the payment card and wirelessly transmitted to the mobile device (See at least Adrangi [0042-0043]; [0046-0047]; [0102]; Fig. 1A; Fig. 4 step 425; also see [0059-0062]. Adrangi teaches verifying, using the decrypted resulting information (i.e., and using the decrypted cryptogram), that the authentication code (i.e., the information in the cryptogram) was generated by the payment card (i.e., generated by the payment instrument) and wirelessly transmitted to the mobile device (i.e., wirelessly transmitted to the card reader in the mobile device, e.g., via NFC radio).); and approving the authentication request based on the verification that that the authentication code was generated by the card and wirelessly transmitted to the mobile device from the card based on the decrypted resulting information from the cryptogram (See at least Adrangi [0031]; [0042-0043]; [0046-0047]; [0102]; Fig. 1A; Fig. 4; also see [0059-0062]. Adrangi teaches approving the authentication request (i.e., register request) based on the verification that that the authentication code (i.e., the information in the cryptogram) was generated by the card (i.e., generated by the payment instrument) and wirelessly transmitted to the mobile device from the card (i.e., wirelessly transmitted to the card reader in the mobile device, e.g., via NFC radio) based on the decrypted resulting information from the cryptogram.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Adrangi into Carpenter’s method of decrypting a cryptogram and ensuring that the decrypted value is an expected value prior to activating a credential/token. One of ordinary skill in the art would have been motivated to include such features in order to register a payment instrument and to associate the payment instrument with a platform based upon a cryptogram received from the payment instrument via the platform during a registration procedure (Adrangi [0102]).
Regarding Claim 7: The combination of Carpenter, Singh and Adrangi discloses the method of claim 6. Carpenter further discloses wherein the authentication request includes customer information and account information (See at least Carpenter [0078]; [0098]; [0102]; [0164]. Carpenter discloses wherein the authentication request (i.e., provisioning request) includes customer information and account information (e.g., consumer identifier or login information/credentials, a zip code, device information to identify the mobile device, a DVV).).
Regarding Claim 8: The combination of Carpenter, Singh and Adrangi discloses the method of claim 7. Carpenter further discloses wherein the customer information comprises at least one of a name, an address, or a phone number (See at least Carpenter [0078]; [0098]; [0102]; [0164]. Carpenter discloses wherein the customer information comprises at least one of a name (i.e., consumer identifier or login information/credentials), an address (i.e., physical address, zip code), or a phone number of a user (i.e., device information to identify the mobile device).).
Regarding Claim 9: The combination of Carpenter, Singh and Adrangi discloses the method of claim 7. Carpenter further discloses:
comparing, by the computing system, the account information with information from a database of the computing system (See at least Carpenter [0071]; [0098]; [0102]; [0135-0136]; [0170].); and
verifying, by the computing system, the account information based on the comparison of the account information and the information from the database (See at least Carpenter [0071]; [0098]; [0102]; [0135-0136]; [0170].).
Regarding Claim 10: The combination of Carpenter, Singh and Adrangi discloses the method of claim 6. Carpenter does not explicitly disclose wherein the predefined transaction charge amount is $0.00 or $0.01. Singh, on the other hand, further teaches wherein the predefined transaction charge amount is $0.00 or $0.01 (See at least Singh [0032] “the EMV transaction may be for a nominal or designated amount (e.g., 1 cent), for example, although in some embodiments a transaction amount is not required”.).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Singh into Carpenter’s method activating a payment credential/token based on a received request. One of ordinary skill in the art would have been motivated to include such features in order to initiate an EMV payment verification transaction with an authentication server to download a secure payment applet (Singh [0032]).
Regarding Claim 11: The combination of Carpenter, Singh and Adrangi discloses the method of claim 6. Carpenter further discloses wherein the authentication request includes an identifier associated with the mobile device and account information (See at least Carpenter [0078]; [0098]; [0102]; [0164]. Carpenter discloses wherein the authentication request (i.e., provisioning request) includes an identifier associated with the mobile device (e.g., device information to identify the mobile device, consumer identifier or login information/credentials) and account information (e.g., consumer identifier or login information/credentials, a zip code, device information to identify the mobile device).).
Regarding Claim 12: The combination of Carpenter, Singh and Adrangi discloses the method of claim 11. Carpenter further discloses verifying, by the computing system, the identifier associated with the mobile device based on the identifier being associated with the account information in a database of the computing system (See at least Carpenter [0071]; [0098]; [0102]).
Regarding Claim 13: The combination of Carpenter, Singh and Adrangi discloses the method of claim 6. Carpenter further discloses determining, by the computing system, that information regarding a user and information from the mobile device match (See at least Carpenter [0071]; [0098]; [0102]; [0135-0136]; [0170].).
Regarding Claim 14: The combination of Carpenter, Singh and Adrangi discloses the method of claim 13. Carpenter further discloses approving, by the computing system, the authentication request is further based on the information regarding the user and the information from the mobile device matching (See at least Carpenter [0071]; [0098]; [0102]; [0135-0136]; [0170]; Fig. 3.).
Regarding Claim 15: Carpenter discloses a computing system comprising:
a network interface configured to communicate over a network with a mobile device (See at least Carpenter [0183-0184] “external interface 1022 can be used to connect the computer apparatus to a wide area network (WAN) such as the Internet”; Fig. 10);
a customer database configured to store information for a plurality of customers (See at least Carpenter [0044]; [0071] “a service provider 230 computer may maintain a personalization database (not illustrated herein) with information about users”); and
one or more processors coupled to at least one memory (See at least Carpenter [0183-0184] “fixed disk 1020 (or other memory comprising computer readable media, which may include a non-transitory computer readable storage medium) […] the central processor 1008 (which may comprise one or more processing units, processor cores, combinations thereof, etc.) to communicate with each subsystem and to control the execution of instructions from system memory 1006 or the fixed disk 1020, as well as the exchange of information between subsystems. The system memory 1006 and/or the fixed disk 1020 may embody a computer readable medium such as a non-transitory computer readable storage medium.”; Fig. 10), the one or more processors configured to:
receive a transaction from the mobile device associated with a user (See at least Carpenter [0078]. Carpenter discloses receiving a transaction (i.e., request) from the mobile device associated with a user.);
identify the transaction as an authentication request, wherein the authentication request includes an authentication code (See at least Carpenter [0078-0079]. Carpenter discloses identifying the transaction (i.e., the request) as an authentication request (i.e., as a provisioning request), wherein the authentication request includes an authentication code (i.e., user authentication information, which includes, among other things, a value in a cryptogram).);
process the authentication request as a transaction request to reveal a cryptogram (See at least Carpenter [0078-0079]. Carpenter discloses processing (e.g., by verifying) the authentication request (i.e., provisioning request) as a transaction request to reveal a cryptogram (i.e., reveal the cryptogram in the user authentication information.);
decrypt the cryptogram to determine resulting information (See at least Carpenter [0078-0079]. Carpenter discloses decrypting the cryptogram to determine resulting information (i.e., to determine a decrypted value in the cryptogram).);
verify, using the decrypted resulting information, the authentication code (See at least Carpenter [0079]. Carpenter discloses verifying, using the decrypted resulting information (i.e., using the decrypted value), the authentication code (i.e., based on ensuring that the value in the cryptogram is an expected value).);
approve the authentication request based on the verification based on the decrypted resulting information from the cryptogram (See at least Carpenter [0079]. Carpenter discloses approving the authentication request (i.e., provisioning request) based on the verification based on the decrypted resulting information from the cryptogram (i.e., indicated by the fact that the server begins the provisioning process after the user information (e.g., the cryptogram) is verified).); and
transmit an authentication decision to the mobile device to enable the mobile device to complete transactions involving the payment card (See at least Carpenter [0079]; [0085]; [0108-0109]. Carpenter discloses transmitting an authentication decision (e.g., a payment token, personalization data) to the mobile device, the authentication decision enabling the mobile device to complete transactions involving the card.).
Carpenter does not explicitly disclose: where the received transaction is a “payment” transaction; identifying the payment transaction as an authentication request by determining that the payment transaction includes a predefined transaction charge amount; or processing, based on the predefined transaction charge amount, the authentication request as a transaction request. Singh, on the other hand, teaches:
receiving a payment transaction (See at least Singh [0032]; Fig. 6. Singh teaches receiving a payment transaction (i.e., an EMV payment verification transaction).);
identifying the payment transaction as an authentication request by determining that the payment transaction includes a predefined transaction charge amount (See at least Singh [0032]. Singh teaches identifying the payment transaction as an authentication request by determining (i.e., recognizing) that the payment transaction includes a predefined transaction charge amount (i.e., a nominal or designated amount (e.g., 1 cent)).); and
processing, based on the predefined transaction charge amount, the authentication request as a transaction request (See at least Singh [0032-0034]. Singh teaches processing, based on the predefined transaction charge amount (i.e., based on the nominal or designated amount), the authentication request as a transaction request.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Singh into Carpenter’s method activating a payment credential/token based on a received request. One of ordinary skill in the art would have been motivated to include such features in order to initiate an EMV payment verification transaction with an authentication server to download a secure payment applet (Singh [0032]).
Carpenter also fails to explicitly disclose verifying, using the decrypted resulting information, that the authentication code was generated by the payment card and wirelessly transmitted to the mobile device; and approving the authentication request based on the verification that that the authentication code was generated by the card and wirelessly transmitted to the mobile device from the card.
Adrangi, on the other hand, teaches:
verifying, using the decrypted resulting information, that the authentication code was generated by the payment card and wirelessly transmitted to the mobile device (See at least Adrangi [0042-0043]; [0046-0047]; [0102]; Fig. 1A; Fig. 4 step 425; also see [0059-0062]. Adrangi teaches verifying, using the decrypted resulting information (i.e., and using the decrypted cryptogram), that the authentication code (i.e., the information in the cryptogram) was generated by the payment card (i.e., generated by the payment instrument) and wirelessly transmitted to the mobile device (i.e., wirelessly transmitted to the card reader in the mobile device, e.g., via NFC radio).); and
approving the authentication request based on the verification that that the authentication code was generated by the card and wirelessly transmitted to the mobile device from the card based on the decrypted resulting information from the cryptogram (See at least Adrangi [0031]; [0042-0043]; [0046-0047]; [0102]; Fig. 1A; Fig. 4; also see [0059-0062]. Adrangi teaches approving the authentication request (i.e., register request) based on the verification that that the authentication code (i.e., the information in the cryptogram) was generated by the card (i.e., generated by the payment instrument) and wirelessly transmitted to the mobile device from the card (i.e., wirelessly transmitted to the card reader in the mobile device, e.g., via NFC radio) based on the decrypted resulting information from the cryptogram.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Adrangi into Carpenter’s method of decrypting a cryptogram and ensuring that the decrypted value is an expected value prior to activating a credential/token. One of ordinary skill in the art would have been motivated to include such features in order to register a payment instrument and to associate the payment instrument with a platform based upon a cryptogram received from the payment instrument via the platform during a registration procedure (Adrangi [0102]).
Regarding Claim 16: The combination of Carpenter, Singh and Adrangi discloses the computing system of claim 15. Carpenter further discloses wherein the authentication request includes user information comprising at least one of a name, an address, or a phone number (See at least Carpenter [0078]; [0098]; [0102]; [0164]. Carpenter discloses wherein the authentication request (i.e., provisioning request) includes user information comprising at least one of a name (i.e., consumer identifier or login information/credentials), an address (i.e., physical address, zip code), or a phone number (i.e., device information to identify the mobile device).).
Regarding Claim 17: The combination of Carpenter, Singh and Adrangi discloses the computing system of claim 16. Carpenter further discloses wherein the one or more processors are further configured to communicate with the mobile device through the network interface to verify that the user information corresponds with information from the customer database regarding at least one of the plurality of customers (See at least Carpenter [0071]; [0098]; [0102]; [0134-0136]; [0170].).
Regarding Claim 18: The combination of Carpenter, Singh and Adrangi discloses the computing system of claim 15. Carpenter further discloses wherein the one or more processors are further configured to:
receive information regarding the user, wherein the information regarding the user includes an identifier regarding the mobile device (See at least Carpenter [0078]; [0098]; [0102]; [0164]. Carpenter discloses receiving information regarding the user (e.g., consumer identifier or login information/credentials, a zip code, device information to identify the mobile device, a DVV), wherein the information regarding the user includes an identifier regarding the mobile device (e.g., device information to identify the mobile device, a secure element identifier).); and
determine that the received information regarding the user and information from the mobile device match (See at least Carpenter [0071]; [0078-0079]; [0098]; [0102]; [0135-0136]; [0170].).
Regarding Claim 19: The combination of Carpenter, Singh and Adrangi discloses the computing system of claim 18. Carpenter further discloses wherein the one or more processors are further configured to approve the authentication request based on the received information regarding the user and the information from the mobile device matching (See at least Carpenter [0071]; [0098]; [0102]; [0135-0136]; [0170]; Fig. 3.).
Regarding Claim 20: The combination of Carpenter, Singh and Adrangi discloses the computing system of claim 15. Carpenter does not explicitly disclose wherein the predefined transaction charge amount is $0.00 or $0.01. Singh, on the other hand, further teaches wherein the predefined transaction charge amount is $0.00 or $0.01 (See at least Singh [0032] “the EMV transaction may be for a nominal or designated amount (e.g., 1 cent), for example, although in some embodiments a transaction amount is not required”.).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Singh into Carpenter’s method activating a payment credential/token based on a received request. One of ordinary skill in the art would have been motivated to include such features in order to initiate an EMV payment verification transaction with an authentication server to download a secure payment applet (Singh [0032]).
Response to Arguments
Double Patenting
Applicant indicates that independent claims 1, 6 and 15 have been amended, and, based on the amendments, concludes that the double patenting rejections are moot and overcome. Amendment, p. 8. Examiner respectfully disagrees. Examiner has updated the double patenting rejections to address the amendments. It is noted that the amended claims continue to be a broader version of the independent claims allowed in the 11,037,139 and 12,159,275 patents.
Claim Rejections – 35 U.S.C. § 103
Applicant argues that Carpenter does not disclose "verifying, by the computing system and using the decrypted resulting information, that the authentication code was generated by the payment card" (emphasis added by applicant). Amendment, pp. 9-10. Examiner agrees. Examiner contends that Carpenter discloses decrypting the cryptogram to determine resulting information (i.e., to determine a decrypted value in the cryptogram). Carpenter [0078-0079]. Carpenter also discloses verifying, using the decrypted resulting information (i.e., using the decrypted value), the authentication code (i.e., based on ensuring that the value in the cryptogram is an expected value). Carpenter [0079]. Carpenter differs from the claimed invention, in part, because Carpenter does not explicitly disclose the cryptogram as being from (i.e., generated by) a payment card. In view of the amendments, Examiner has added an additional reference, Adrangi, to the prior art rejection to teach the features highlighted in applicant’s remarks. Examiner contends that the combination of Carpenter, Singh and Adrangi renders independent claims 1, 6 and 15 obvious in view of the prior art.
Applicant’s arguments also touch on the fact that the authentication code was “wirelessly transmitted to the mobile device.” Amendment, p. 10. Examiner notes that the claimed invention is not performing any specific steps/actions to verify that the authentication code was wirelessly transmitted. Rather, the claimed invention is merely verifying the authentication code using decrypted information. Furthermore, Examiner is unable to find any details in applicant’s disclosure describing how a computing system (e.g., a server) would verify that information provided to the computing system, by the mobile device, was received wirelessly from the payment card. Accordingly, a 35 U.S.C. 112(a) rejection has been added to address this newly added subject matter.
For the above reasons, and for those set forth in the 35 U.S.C. § 103 rejection above, all claims remain rejected under 35 U.S.C. § 103.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure is cited in the Notice of References Cited (PTO-892). The additional cited art further establishes the state of the art prior to the effective filling date of Applicant’s claimed invention.
Khan et al. (US 2015/0348007 A1) discloses receiving a card cryptogram, decoding a card cryptogram and comparing an AuthRand value in the card cryptogram to a locally retrieved AuthRand. Khan [0098]; [0100]. Khan indicates that if the AuthRand values match, then a payment applet will be temporarily activated so that a user can use the mobile device and payment applet to perform a financial transaction. Khan [0100]. Buer (US 9,813,236 B2) discloses where the payment transaction is identified as an authentication request "by determining that the payment transaction includes a predefined payment amount.” Buer Col. 6 lines 15-30.
Brickell et al. (US 2016/0125396 A1) discloses where an application resident on a payment card calculates a cryptographic checksum based on an unpredictable number and a shared secret and communicates the checksum and payment card information to a user computing device, which communicates the checksum, payment card information, and a user computing device identifier to the issuer system via the payment processing system. The issuer system verifies the checksum using the shared secret and the unpredictable number associated with the payment card information. The issuer system generates a token associated with the payment card and transmits the token to the user computing device via the payment processing system for storage on the digital wallet application resident on the user computing device. The user conducts a transaction with a point of sale ("POS") device at a merchant system location or with an online merchant website via the digital wallet application resident on the user computing device using the token associated with the payment card. Brickell [0018]; Fig. 3.; Fig. 7.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/J.F./Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698
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