DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
The claims filed 6/26/2026 are examined herein.
Claims 1, 5, 8, 12, 15, 19, and 21-35 are pending.
Claims 1, 8, and 15 are independent.
Claims 1, 5, 8, 12, 15, and 19 are currently amended.
Claims 21-35 are new.
Response to Arguments
Double Patenting
The nonstatutory double patenting rejections over U.S. Patent No. 11,100,511 B2, U.S. Patent No. 11,676,152 B2, and U.S. Patent No. 12,159,285 B2 are maintained absent any specific arguments provided by Applicant. The rejections are updated herein in view of the current amendments.
35 U.S.C. 103
Applicant’s arguments regarding the prior rejections under 35 U.S.C. 103 have been considered but are moot in view of the new grounds of rejection presented herein.
Claim Objections
Claims 1 and 8 are objected to because of the following informalities: The claims recite “by a application” instead of “by an application”. Appropriate correction is required.
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.
U.S. Patent No. 11,100,511 B2
Claims 1, 8, 15, 22, 27, and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,100,511 B2.
Claims 5, 12, 19, 23, 25, 28, 30, 33, and 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,100,511 B2 in view of Anderson (US 2019/0325445 A1).
Claims 21, 26, and 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,100,511 B2 in view of Ho (US 11,188,919 B1).
Claims 24, 29, and 34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,100,511 B2 in view of Han (US 2015/0074615 A1).
Regarding claim 1, the claim shares substantially similar limitations as reference claim 2 drawn to receiving encrypted data from a contactless card based on a diversified key, transmitting, the encrypted data to a server, receiving an indication of successful decryption by the server, receiving data comprising a virtual account number (VAN), and autofilling data into fields of an application.
Regarding claim 5, reference claim 2 does not explicitly disclose, but Anderson teaches a billing address (see paras. 0074, 0079). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of the reference claim to include the feature of Anderson to autofill information required to checkout (see Anderson, para. 0079).
Regarding claim 21, reference claim 2 does not explicitly disclose, but Ho teaches wherein receiving the encrypted data from the contactless card comprises: establishing a Near Field Communication (NFC) connection between the mobile device and the contactless card when the contactless card is placed in proximity to the mobile device; and receiving the encrypted data and an unencrypted identifier via the NFC connection (see col. 4, ll. 6-27; col. 8, ll. 42-67). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of the reference claim to include the feature of Ho in order to enable authentication to a card issuer system (see col. 8, ll. 42-67).
Regarding claim 22, the claim shares substantially similar limitations as reference claim 2 drawn to a diversified key using a counter value.
Regarding claim 23, reference claim 2 does not explicitly disclose, but Anderson teaches wherein the data associated with the account received from the server further comprises a user name and an address (see para. 0074, 0079). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of the reference claim further to include the feature of Anderson to autofill information required to checkout (see Anderson, para. 0079).
Regarding claim 24, reference claim 2 does not explicitly disclose, but Han teaches prompting a user of the mobile device to perform a biometric authentication prior to autofilling the VAN, the expiration date, and the CVV into the plurality of fields; and autofilling the plurality of fields only after the biometric authentication is successfully verified by the mobile device (see para. 0428-0430). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of the reference claim to include the feature taught by Han to provide an efficient and intuitive way of providing automatic usage of saved credentials (see Han para. 0504).
Regarding claim 25, reference claim 2 does not explicitly disclose, but Anderson teaches wherein the user interface of the application comprises a checkout page associated with a merchant, and wherein the VAN received from the server is a merchant-specific virtual account number generated by the server specifically for a transaction with the merchant (see para. 0065, 0075). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of the reference claim to include the feature of Anderson to help ensure that the token is only valid for the purchase of the cart (see Anderson, para. 0075).
Regarding claims 8, 12, 15, 19, and 26-35, the claims recite product and apparatus claims comprising functional language corresponding to method claims 1, 5, and 21-25 and are similarly rejected over the reference claims.
U.S. Patent No. 11,676,152 B2
Claims 1, 8, 15, 22, 27, and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,676,152 B2.
Claims 5, 12, 19, 23, 25, 28, 30, 33, and 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,676,152 B2 in view of Anderson (US 2019/0325445 A1).
Claims 21, 26, and 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,676,152 B2 in view of Ho (US 11,188,919 B1).
Claims 24, 29, and 34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,676,152 B2 in view of Han (US 2015/0074615 A1).
Regarding claim 1, the claim shares substantially similar limitations as reference claim 4 drawn to receiving encrypted data from a contactless card based on a diversified key, transmitting, the encrypted data to a server, receiving an indication of successful decryption by the server, receiving data comprising a virtual account number (VAN), and autofilling data into fields of an application.
Regarding claim 5, reference claim 4 does not explicitly disclose, but Anderson teaches a billing address (see paras. 0074, 0079). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of the reference claim to include the feature of Anderson to autofill information required to checkout (see Anderson, para. 0079).
Regarding claim 21, reference claim 4 does not explicitly disclose, but Ho teaches wherein receiving the encrypted data from the contactless card comprises: establishing a Near Field Communication (NFC) connection between the mobile device and the contactless card when the contactless card is placed in proximity to the mobile device; and receiving the encrypted data and an unencrypted identifier via the NFC connection (see col. 4, ll. 6-27; col. 8, ll. 42-67). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of the reference claim to include the feature of Ho in order to enable authentication to a card issuer system (see col. 8, ll. 42-67).
Regarding claim 22, the claim shares substantially similar limitations as reference claim 4 drawn to a diversified key using a counter value.
Regarding claim 23, reference claim 4 does not explicitly disclose, but Anderson teaches wherein the data associated with the account received from the server further comprises a user name and an address (see para. 0074, 0079). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of the reference claim further to include the feature of Anderson to autofill information required to checkout (see Anderson, para. 0079).
Regarding claim 24, reference claim 4 does not explicitly disclose, but Han teaches prompting a user of the mobile device to perform a biometric authentication prior to autofilling the VAN, the expiration date, and the CVV into the plurality of fields; and autofilling the plurality of fields only after the biometric authentication is successfully verified by the mobile device (see para. 0428-0430). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of the reference claim to include the feature taught by Han to provide an efficient and intuitive way of providing automatic usage of saved credentials (see Han para. 0504).
Regarding claim 25, reference claim 4 does not explicitly disclose, but Anderson teaches wherein the user interface of the application comprises a checkout page associated with a merchant, and wherein the VAN received from the server is a merchant-specific virtual account number generated by the server specifically for a transaction with the merchant (see para. 0065, 0075). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of the reference claim to include the feature of Anderson to help ensure that the token is only valid for the purchase of the cart (see Anderson, para. 0075).
Regarding claims 8, 12, 15, 19, and 26-35, the claims recite product and apparatus claims comprising functional language corresponding to method claims 1, 5, and 21-25 and are similarly rejected over the reference claims.
U.S. Patent No. 12,159,285 B2
Claims 1, 8, 15, 22, 27, and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,159,285 B2.
Claims 5, 12, 19, 23, 25, 28, 30, 33, and 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,159,285 in view of Anderson (US 2019/0325445 A1).
Claims 21, 26, and 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,159,285 B2 in view of Ho (US 11,188,919 B1).
Claims 24, 29, and 34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,159,285 B2 in view of Han (US 2015/0074615 A1).
Regarding claim 1, the claim shares substantially similar limitations as reference claim 4 drawn to receiving encrypted data from a contactless card based on a diversified key, transmitting, the encrypted data to a server, receiving an indication of successful decryption by the server, receiving data comprising a virtual account number (VAN), and autofilling data into fields of an application.
Regarding claim 5, reference claim 4 does not explicitly disclose, but Anderson teaches a billing address (see paras. 0074, 0079). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of the reference claim to include the feature of Anderson to autofill information required to checkout (see Anderson, para. 0079).
Regarding claim 21, reference claim 4 does not explicitly disclose, but Ho teaches wherein receiving the encrypted data from the contactless card comprises: establishing a Near Field Communication (NFC) connection between the mobile device and the contactless card when the contactless card is placed in proximity to the mobile device; and receiving the encrypted data and an unencrypted identifier via the NFC connection (see col. 4, ll. 6-27; col. 8, ll. 42-67). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of the reference claim to include the feature of Ho in order to enable authentication to a card issuer system (see col. 8, ll. 42-67).
Regarding claim 22, the claim shares substantially similar limitations as reference claim 4 drawn to a diversified key using a counter value.
Regarding claim 23, reference claim 4 does not explicitly disclose, but Anderson teaches wherein the data associated with the account received from the server further comprises a user name and an address (see para. 0074, 0079). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of the reference claim further to include the feature of Anderson to autofill information required to checkout (see Anderson, para. 0079).
Regarding claim 24, reference claim 4 does not explicitly disclose, but Han teaches prompting a user of the mobile device to perform a biometric authentication prior to autofilling the VAN, the expiration date, and the CVV into the plurality of fields; and autofilling the plurality of fields only after the biometric authentication is successfully verified by the mobile device (see para. 0428-0430). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of the reference claim to include the feature taught by Han to provide an efficient and intuitive way of providing automatic usage of saved credentials (see Han para. 0504).
Regarding claim 25, reference claim 4 does not explicitly disclose, but Anderson teaches wherein the user interface of the application comprises a checkout page associated with a merchant, and wherein the VAN received from the server is a merchant-specific virtual account number generated by the server specifically for a transaction with the merchant (see para. 0065, 0075). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of the reference claim to include the feature of Anderson to help ensure that the token is only valid for the purchase of the cart (see Anderson, para. 0075).
Regarding claims 8, 12, 15, 19, and 26-35, the claims recite product and apparatus claims comprising functional language corresponding to method claims 1, 5, and 21-25 and are similarly rejected over the reference claims.
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.
Claims 1, 8, 15, 21-22, 26-27, and 31-32 are rejected under 35 U.S.C. 103 as being unpatentable over Ho (US 11,188,919 B1) in view of Khalid (US 2014/0138435 A1), further in view of Fiske (US 2014/0040149 A1).
Regarding claims 1, 8, and 15, Ho discloses a method and associated product/apparatus, comprising:
receiving, by an application executing on a processor of a mobile device, encrypted data from a contactless card, wherein the encrypted data is generated by the contactless card (see col. 8, ll. 21-41);
transmitting, by the first application, the encrypted data to a server for verification (see col. 8, ll. 42-67);
receiving, by the application from the server, an indication that the server successfully decrypted the encrypted data using a corresponding diversified key generated by the server (see col. 9, ll. 20-42);
receiving, by the application from the server, data associated with an account, wherein the data comprises one or more of a virtual account number (VAN), an expiration date for the VAN, a card verification value (CVV) for the VAN, or a combination thereof (see col. 9, ll. 20-42); and
Ho does not explicitly disclose, but Khalid teaches autofilling, by the application, the data into at least one of a plurality of corresponding fields in a user interface of the application (see para. 0062).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method, product, and apparatus of Ho to include the feature taught by Khalid to enable a user to complete a purchase (see Khalid para. 0062).
Ho discloses encrypting at least a customer identifier (see col. 8, ll. 21-41). Ho does not explicitly disclose, but Fiske teaches encrypting at least a customer identifier using a diversified key, and wherein the diversified key is generated by the contactless card based on a card master key and a counter value (see para. 0066).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method, product, and apparatus of Ho to include the feature taught by Fiske to ensure variation between keys used (see Fiske para. 0066).
Regarding claim 21, 26, and 31, Ho discloses, wherein receiving the encrypted data from the contactless card comprises: establishing a Near Field Communication (NFC) connection between the mobile device and the contactless card when the contactless card is placed in proximity to the mobile device; and receiving the encrypted data and an unencrypted identifier via the NFC connection (see col. 4, ll. 6-27; col. 8, ll. 42-67).
Regarding claims 22, 27, and 32, Fiske teaches wherein the synchronized counter value is incremented by an applet on the contactless card each time the contactless card generates the diversified key (see para. 0066, wherein the ICC derives one session key per transaction from the master key and the ATC, which varies each transaction).
Claims 5, 12, 19, 23, 25, 28, 30, 33, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Ho (US 11,188,919 B1) in view of Khalid (US 2014/0138435 A1), further in view of Fiske (US 2014/0040149 A1), further in view of Anderson (US 2019/0325445 A1).
Regarding claims 5, 12, and 19, Ho does not explicitly disclose, but Anderson teaches wherein the data associated with the account comprises a billing address of the account (see para. 0074, 0079).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method, product, and apparatus of Ho further to include the feature of Anderson to autofill information required to checkout (see Anderson, para. 0079).
Regarding claims 23, 28, and 33, the combination set forth with regard to the base claim teaches autofilling, by the application, into corresponding fields in the user interface of the application (see Khalid, para. 0062). However, the combination does not explicitly teach, but Anderson teaches wherein the data associated with the account received from the server further comprises a user name and an address (see para. 0074, 0079).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method, product, and apparatus of Ho further to include the feature of Anderson to autofill information required to checkout (see Anderson, para. 0079).
Regarding claims 25, 30, and 35, Ho does not explicitly disclose, but Anderson teaches wherein the user interface of the application comprises a checkout page associated with a merchant, and wherein the VAN received from the server is a merchant-specific virtual account number generated by the server specifically for a transaction with the merchant (see para. 0065, 0075).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method, product, and apparatus of Ho further to include the feature of Anderson to help ensure that the token is only valid for the purchase of the cart (see Anderson, para. 0075).
Claims 24, 29, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Ho (US 11,188,919 B1) in view of Khalid (US 2014/0138435 A1), further in view of Fiske (US 2014/0040149), further in view of Han (US 2015/0074615 A1).
Regarding claims 24, 29, and 34, the combination set forth with regard to the base claim does not explicitly disclose, but Han teaches prompting a user of the mobile device to perform a biometric authentication prior to autofilling the VAN, the expiration date, and the CVV into the plurality of fields; and autofilling the plurality of fields only after the biometric authentication is successfully verified by the mobile device (see para. 0428-0430)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method, product, and apparatus of Ho further to include the feature taught by Han to provide an efficient and intuitive way of providing automatic usage of credentials (see Han para. 0504).
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC T WONG whose telephone number is (571)270-3405. The examiner can normally be reached 9am-5pm M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael W Anderson can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC T WONG/Primary Examiner, Art Unit 3693
ERIC WONG
Primary Examiner
Art Unit 3693
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