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 .
Status of Claims
Claims 1-20 are cancelled and claims 21-40 are newly added. Claims 21-40 filed 3/10/25 are pending.
Double Patenting
3. 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).
4. 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).
5. 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.
6. 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.
7. Claims 21-40 are rejected on the ground of provisional nonstatutory double patenting as being unpatentable over claims 1-4, 6-8, 11-13, 16-19, 21, and 26-30 of U.S. Patent 12,165,149. In fact, the ‘149 patent is more detailed and more specific and encompasses almost all of the elements of the broader, current ‘744 application as seen below.
8. This is an obviousness nonstatutory double patenting rejection because although the conflicting claims are not identical, they are not patentably distinct from each other because the claimed limitations from the present application and U.S. Patent 12,165,149 above are significantly similar and the claimed features seem to be identical with various obvious alternate methods. The omission of an element with a corresponding loss of function is an obvious expedient. See In re Karlson, 136 USPQ 184 and Ex parte Rainu, 168 USPQ 375. For these reasons, claims 21-40 of the instant application are not identical to claims 1-4, 6-8, 11-13, 16-19, 21, and 26-30 of U.S. Patent 12,165,149, but they are not patentably distinct.
Claim Rejections - 35 USC § 103
9. 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.
10. 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.
11. The factual inquiries 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.
12. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
13. Claims 21-40 are rejected under 35 U.S.C. 103 as being unpatentable over Gullberg et al (EP 3,582,166) in view of Todasco et al (2017/0324752).
14. Re Claims 21, 32, 39: Gullberg discloses comprising:
a server, comprising a processor and a memory, wherein the server is configured to (see [0087, 0123] server):
receiving a card verification request to verify a contactless card associated with a user, the card verification request being transmitted by an application executing on a client device in short-range communication with the contactless card, wherein the card verification request is accompanied by a first type data read from the contactless card and a second type data read from the contactless card (see [0116-0117] short-range communication field, [0126-0128] "the NDEF application 5 starts to capture internal card data such as seed 6 and counter 7. Before sending the response including the current record, the software application 5 in the NFC device, is configured to execute steps aiming to collects predetermined data. Here, data 6 & 7 are available as memorized in an identified memory register. Software application 5 may also capture optional data such as blob 21 and ATC 10 from an EMV Application 11. Said blob may take any form of data, such as an identity of the user and/or card, the Primary Account Number (PAN) and Expiry Date (EXP) either in clear text or encrypted/obfuscated format. [...] Then the Mobile Application (2) then sends (107) the Record including with the Credentials (23) entered (26) by the user (20) in the Mobile Application (2) to the Application Server (17) over the communication network (15) [...] At step 108, the application server 17 forwards the record 22 and credentials 23 to the validation server 18");
determining a first identifier based on the first type data (see [0128]: "the validation server 18 then continues and extracts identity from blob 21 contained in the record 22.");
verifying the contactless card based on the first identifier and the second identifier (see [0128]: "the validation server 18 then continues to validate the response, using the data received, together with the data that was extracted and retrieved in previous step"); and
transmitting a verification message to the application, wherein the verification message corresponds to at least one selected from the group of a message indicating that the contactless card has not been successfully verified and a message indicating that the contactless card has been successfully verified (see [0128]: "At step 114, the validation server 18 returns OK to application server, who then welcomes the customer at step 115 by sending corresponding message.).
Although Gullberg discloses two or more security factors in [0071] and discloses the following (see [0128]: "After identity have been retrieved, the validation server 18 looks up (or extracts) the seed; The retrieved seed and/or key is normally shared between the banking server 16 and the card 12 and/or the NDEF application 5, and may also be a corresponding public key, relating to seed 6."), it fails to explicitly disclose determining the second user identifier. Meanwhile, Todasco discloses:
determining a second identifier based on the second type data (see [0015] determining second user).
From the teaching of Todasco, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to modify Gullberg’s secure activation with Todasco’s disclosure of a second user identifier in order for “… target authentication queries based on detected user actions (see Todasco Abstract).”
15. Re Claim 22: Gullberg discloses wherein: the first type comprises near field
communication (NFC) data exchange format data (see [0027, 0030-0032] discloses NFC).
16. Re Claim 23: Gullberg discloses wherein the second type comprises Europay Mastercard Visa (EMV) data (see [0036-0037] discloses EMV).
17. Re Claim 24: Gullberg discloses the procedures further comprising establishing a database storing user identifier information for a plurality of contactless cards (see [0079, 0087] database).
18. Re Claim 25: Gullberg discloses wherein determining the first identifier based on the first type data comprises searching the database using at least a portion of the first type data (see [0079, 0087] database, [0137] searching database).
19. Re Claim 26: Gullberg discloses wherein determining the second identifier based on the second type data comprises searching the database using at least a portion of the second type data (see [0079, 0087] database, [0137] searching database).
20. Re Claim 27: Gullberg discloses the procedures further comprising transmitting the second type data to a card authorization network (see [0124] authorization host).
21. Re Claim 28: Gullberg discloses the procedures further comprising receiving a transaction authorization response from the card authorization network (see [0124] authorization host).
22. Re Claim 29: Gullberg discloses wherein: the first type data read is in response to a first entry motion of the contactless card into a short-range communication field, and the second type data read is in response to a second entry motion of the contactless card into a short-range communication field (see [0099] first record in first session, second record in second session).
23. Re Claims 30, 33: Gullberg discloses wherein a transmission of the verification message by the server is based on determining that both of the first identifier and the second identifier correspond to the contactless card (see [0128]: "At step 114, the validation server 18 returns OK to application server, who then welcomes the customer at step 115 by sending corresponding message. Also return status failure.).
24. Re Claims 31, 34: Gullberg discloses wherein a transmission of the verification message by the server is based on determining that both of the first identifier and the second identifier correspond to the user of the contactless card (see [0128]: "At step 114, the validation server 18 returns OK to application server, who then welcomes the customer at step 115 by sending corresponding message. Also return status failure.).
25. Re Claim 35: Gullberg discloses wherein a transmission of the verification message is based on determining that the first identifier corresponds to the user and the second identifier corresponds to the contactless card (see [0128]: "At step 114, the validation server 18 returns OK to application server, who then welcomes the customer at step 115 by sending corresponding message. Also return status failure.).
26. Re Claim 36: Gullberg discloses wherein: the server is in data communication with a database, and a verification of the contactless card comprises using the first identifier to look up a first user identification information from the database and the second identifier to look up a second user identification information from the database (see [0137] searching database).
27. Re Claim 37: Gullberg discloses wherein: the first type data read is in response to a first entry motion of the contactless card into a short-range communication field, and the second type data read is in response to a second entry motion of the contactless card into a short-range communication field (see [0099] first record in first session, second record in second session).
28. Re Claim 38: Gullberg discloses wherein the client device is configured to distinguish the first entry motion from the second entry motion (see [0099] first record in first session, second record in second session).
29. Re Claim 40: Gullberg discloses wherein the client device is associated with the user (see [0029] discloses NFC device).
Examiner Notes
30. The Examiner suggests incorporating more hardware similar to the parent case, as well as incorporating dependent claims 22-24, 27, 36, and 37 together into the independent claims. Finally, the Examiner suggests incorporating more hardware from the Specification and any unique arrangements of hardware, unique hardware, or unique ways the hardware is communicating. The aforementioned claim suggestions, in combination together, is suggested to help advance prosecution forward, although further search, examination, and consideration is required. The Examiner suggests filing a terminal disclaimer to overcome the double patenting rejection.
Conclusion
31. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Timalsina et al (NFC and its application to mobile payment: Overview and comparison, NPL) is found to be the most pertinent NPL prior art.
32. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FAWAAD HAIDER whose telephone number is (571)272-7178. The examiner can normally be reached on Mon-Fri 8 AM to 5 PM.
33. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Ryan Zeender can be reached on 571-272-6790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
34. 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.
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/Fawaad Haider/
Primary Examiner, Art Unit 3627
Prosecution Insights