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 .
This Office Action is in response to Application No. 18/975,681 filed on 12/10/2024.
Claims 1-18 have been examined and are pending in this application.
Priority
Acknowledgment is made of Applicant’s claim for priority under 35 U.S.C. 119 (c) parent Application No. PCT/US2017/052481 filed on 09/20/2017.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/10/2024, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-18 of U.S. Patent No. 12192760 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations recited in claims 1-18 of the instant application No. 18/975,681 are anticipated by limitations recited in claims 1-18 patent No. 12,192,760, respectively (see table below).
Instant Application No. 18/975,681
Patent No. 12,192,760 B2
Claim 1
Claim 1
A method performed by a remote system, the method comprising: receiving, from a mobile communication device, a first credential associated with a first entity, wherein the first credential was received by the mobile communication device from a beacon device associated with the first entity and a location via a broadcast signal;
A method, comprising: receiving, by a mobile communication device operated by a user, a broadcast signal from a beacon device associated with a first entity and a location, the broadcast signal encoding a first credential associated with the first entity;
determining that the first entity is authentic using the first credential;
transmitting, by the mobile communication device, the first credential to an authentication system, wherein the authentication system determines that the first entity associated with the broadcast signal is authentic using the first credential and generates a confirmation message confirming authenticity of the first entity;
generating a confirmation message confirming authenticity of the first entity;
receiving, by the mobile communication device from the authentication system, the confirmation message confirming the authenticity of the first entity;
transmitting, to the mobile communication device, the confirmation message confirming the authenticity of the first entity , wherein, in response to receiving the confirmation message confirming the authenticity of the first entity, the mobile communication device transmits, to the beacon device, a communication indicating that the authenticity of the first entity is confirmed, wherein, upon receiving, by the beacon device, the communication indicating that the authenticity of the first entity is confirmed, the beacon device initiates an interaction with the mobile communication device by activating an application for collecting an item data on the mobile communication device, wherein the application is configured to start collecting the item data in response to being activated by the beacon device;
transmitting, by the mobile communication device to the beacon device, a communication indicating that the authenticity of the first entity is confirmed, wherein, in response to receiving, by the beacon device from the mobile communication device, the communication indicating that the authenticity of the first entity is confirmed, the beacon device initiates an interaction with the mobile communication device by activating an application for collecting an item data on the mobile communication device, wherein the application is configured to start collecting the item data in response to being activated by the beacon device; and
receiving a message comprising a first item identifier corresponding to a first item, the first item identifier being collected by the application as a part of the item data, wherein the message is generated by the mobile communication device in response to the application on the mobile communication device receiving a user input indicating an end of the interaction or in response to determining by the mobile communication device that the mobile communication device is positioned at the location;
in response to receiving through the application on the mobile communication device a user input indicating an end of the interaction or in response to determining by the mobile communication device that the mobile communication device is positioned at the location, transmitting, by the mobile communication device to an access device, a message comprising a first item identifier corresponding to a first item, the first item identifier being collected by the application as a part of the item data,
transmitting, to an authorizing entity computer, an authorization request message and the first item identifier;
wherein receiving the message comprising the first item identifier by the access device causes the access device to transmit, to an authorizing entity computer, an authorization request message and the first item identifier, and
receiving an authorization response message comprising the first item identifier from the authorizing entity computer; and in response to the receiving the authorization response message, transmitting the authorization response message comprising the first item identifier to a barrier device positioned at the location and configured to allow a user of the mobile communication device to leave the location based on the barrier device scanning an item at the location to obtain an item identifier and identifying that the first item identifier from the authorization response message matches the item identifier of the scanned item
wherein receiving an authorization response message comprising the first item identifier from the authorizing entity computer, causes the access device to transmit the authorization response message comprising the first item identifier to a barrier device positioned at the location and configured to allow the user to leave the location based on the barrier device scanning an item at the location to obtain an item identifier and identifying that the first item identifier from the authorization response message matches the item identifier of the scanned item
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
“remote system” does not clearly correspond to the disclosed components
Claims 1 and 10 recite “performed by a remote system,” but the claimed remote system performs both: 1) authentication system functions, such as receiving the first credential and determining the first entity is authentic; and 2) remote access and payment functions, such as transmitting an authorization request to an authorizing entity computer and forwarding the authorization response to a barrier device. The figures and specification, however, show separate components: authentication system 130, remote access device 140, authorizing entity computer 150, resource provider computer 190, and barrier device 192. The specification states that the authentication system communicates with the beacon and mobile device, while the remote access device communicates with the authorizing entity computer. It is unclear because the claimed “remote system” performs functions attributed in the specification to different disclosed components, including authentication system 130 and remote access device 140. The specification and FIG. 1 do not clearly identify a single “remote system” corresponding to the claimed actor that both authenticates the first entity and performs the authorization, request, authorization, response, and barrier device processing. Therefore, the scope of the claimed “remote system” is unclear.
Claims 2-9, and 11-18 are rejected based upon their dependence upon claims 1 and 10 respectively.
Allowable Subject Matter
Claims 1-18 would be allowable if rewritten/amended to overcome (a) the 35 USC 112(b) rejection, and (c) filing a terminal disclaimer to overcome the double patenting rejection.
The following is a statement of reasons for the indication of allowable subject matter:
The examiner does not find references anticipating nor a combination of references making obvious in combination with all the elements in the independent claims. The closest prior art of record includes Chitilian et al. (U.S. 2016/0012414 A1) in view of Raina et al. (US 20160055690 A1), Kaehler et al. (U.S. 2017/0039613 A1) and Ando (J.P 2010015201 A). The references, individually or in combination, teach various aspects of beacon based and location based communication, mobile-device validation, access control, item or product identification, and transaction processing.
However, none of Chitilian in view of Raina, Kaehler, and Ando teach or suggest alone or in combination, the particular combination of steps “transmitting, to the mobile communication device, the confirmation message confirming the authenticity of the first entity , wherein, in response to receiving the confirmation message confirming the authenticity of the first entity, the mobile communication device transmits, to the beacon device, a communication indicating that the authenticity of the first entity is confirmed, wherein, upon receiving, by the beacon device, the communication indicating that the authenticity of the first entity is confirmed, the beacon device initiates an interaction with the mobile communication device by activating an application for collecting an item data on the mobile communication device, wherein the application is configured to start collecting the item data in response to being activated by the beacon device; receiving a message comprising a first item identifier corresponding to a first item, the first item identifier being collected by the application as a part of the item data, wherein the message is generated by the mobile communication device in response to the application on the mobile communication device receiving a user input indicating an end of the interaction or in response to determining by the mobile communication device that the mobile communication device is positioned at the location; transmitting, to an authorizing entity computer, an authorization request message and the first item identifier” as recited in independent claims 1 and 10.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYDIA L NOEL whose telephone number is (571)272-1628. The examiner can normally be reached Monday - Friday 9:00 - 5:00.
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/L.L.N./Examiner, Art Unit 2437
/BENJAMIN E LANIER/Primary Examiner, Art Unit 2437
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