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 .
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.
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Claims 1-5, 7-10, 12, 13, 15-17, and 19-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 11348083 B1 in view of Ozvat et al., US 20190333053 A1.
Although the claims at issue are not identical, they are not patentably distinct from each other because “the identifier of the customer comprises at least one of a user-generated identifier, an email address of the customer, or a biometric identifier of the customer” as used in the issued patent is considered to be a form of “biometric identifier” claimed in 5 and 13; and under the broadest reasonable interpretation, a form of “identifier associated with the customer” claimed in 1, 9 and 15. Claim 15 of the patent also recites “without the first information being provided at the POS system” which is similar to “wherein the identifier is provided in lieu of the payment card or the payment card information” as presently claimed in 1-5, 7-10, 12, 13, 15-17, and 19-24.
Ozvat discloses a reuseable token at ¶ 63, and completing a transaction without a payment card at ¶ 135.
It would have been obvious to one of ordinary skill in the art at the time of the invention to combine the features of the ‘083 patent and Ozvat because of the following findings of fact:
F. Known Work in One Field of Endeavor May Prompt Variations of It for Use in Either the Same Field or a Different One Based on Design Incentives or Other Market Forces if the Variations Are Predictable to One of Ordinary Skill in the Art
(1) the scope and content of the prior art in the same field of endeavor as that of the applicant’s invention include a similar or analogous device (method, or product), i.e. payment architectures, schemes or protocols;
(2) there were design incentives or market forces which would have prompted adaptation of the known device (method, or product), (see Ozvat, ¶ 272)(“Information recorded, aggregated and analyzed from EAMB may allow for improved payment management services for existing and future merchant customers”);
(3) the differences between the claimed invention and the prior art were encompassed in known variations or in a principle known in the prior art;
(4) one of ordinary skill in the art, in view of the identified design incentives or other market forces, could have implemented the claimed variation of the prior art, and the claimed variation would have been predictable to one of ordinary skill in the art.
The rationale and motivation to combine is applied to all other similar 103 rejections herein by reference.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5, 7, 9, 10, 12, 13, 15-17, 19-25 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ozvat et al., US 20190333053 A1.
9. (Original) A computer-implemented method comprising:
receiving, by a payment service system (PSS) from a first merchant system associated with a first merchant, first transaction information associated with a first purchase transaction between a customer and the first merchant, the first transaction information including payment card information of a payment card used in the first purchase transaction and a customer identifier associated with identifying the customer, (see Ozvat, ¶ 51 “To facilitate this discussion, FIGS. 8A and 8B provide example block diagrams for methods for securely handling transaction payments, in accordance with some embodiments. In FIG. 8A, the point-of-sale terminal 102 may collect credit card information (or other sensitive payment information) and transfer the data securely to the payment system(s) 106, at 800a. Intermediary in this transaction is a payment processor which ensures validity of the request, and generates a multi-merchant token. The payment system(s) 106 returns a transaction response securely with the token generated by the payment processor to the merchant.”);
storing, in a database associated with the PSS, an association between the customer identifier and the payment card information, (see Ozvat, ¶ 64, 77 “ The merchant may then store the encrypted token in a local database for later transactions” “the token request is compared against the merchant's setup (as stored in a database) to make sure that the token request is in alignment to the merchant's configuration (at 510)”);
receiving, by the PSS from a second merchant system associated with a second merchant, the customer identifier to initiate a second purchase transaction with the second merchant, wherein the customer identifier is provided in lieu of the payment card or the payment card information, (see Ozvat, ¶ 53 “In contrast to current tokenization systems, the presently disclosed systems and methods transfer a token with a unique makeup (including encrypted card data) that enables distributed storage of sensitive information, as well as the ability for multiple merchants to share the token for transactions. This may be of particular use in franchise or related businesses, where a customer's payment information may be processed by multiple merchants”)(emphasis added);
based at least in part on the association between the customer identifier and the payment card information stored in the database, identifying, by the PSS, the payment card information and contact information associated with the customer, (see Ozvat, ¶ 77 “the token request is compared against the merchant's setup (as stored in a database) to make sure that the token request is in alignment to the merchant's configuration (at 510)”);
transmitting, by the PSS, a transaction confirmation request to a customer device using the contact information, (see Ozvat, ¶ 241 “POS operator identifiers (including user names and passwords) … may be transmitted by the EPMS”);
receiving, by the PSS, a confirmation response from the customer device confirming the second purchase transaction, (see Ozvat, ¶ 159 “In some embodiments, DEP Processing System 1000 utilizing payment management system 120 and/or Payment Client 1025a may act as proxy for a chosen payer so as to conduct a dynamic authentication of a given purchaser 101 using for example a challenge/response sequence based on one of several purchaser pre-configured challenge/responses”) (see Ozvat, ¶ 139 “in some embodiments, if purchaser secret information may be required by the chosen payer system(s), for example a 4-digit PIN or perhaps a 5-digit billing zip code, POS display device(s) 1024 may be utilized to prompt purchaser 101 for said purchaser secret information. POS input device(s) 1022 may be utilized to receive purchaser secret information from purchaser 101.”); and
responsive to receiving the confirmation response, executing, by the PSS, a transfer of a payment amount, associated with the second purchase transaction, from a financial account associated with the payment card to a financial account associated with the second merchant system, (see Ozvat, ¶ 71-72 “Lastly, FIG. 4 is an example process flow diagram for multi-merchant tokenization system, in accordance with some embodiments. Here it is seen that a purchaser 101 makes an electronic payment 402 via a point-of-sale terminal 102. The transaction request built by the point-of-sale terminal 102 includes an indication requesting tokenization, in this example. The transaction is submitted to the tokenization and payment management system 120, in this example, where the transaction data is checked for the token indicator (at 404). The merchant ID included in the transaction data is also compared against records to determine if the merchant is configured for tokenization. If the token indicator is present, and the merchant ID matches the ability to perform tokenization, then the transaction is set to be routed through tokenization logic, and is sent to the payment system(s) 106 for authorization (at 406)”).
10. (Currently Amended) The computer-implemented method of claim 9, wherein the payment card is a conventional credit card, a conventional debit card, [[or]] a smartcard, or a proxy card, (see Ozvat, ¶ 12).
12. (Original) The computer-implemented method of claim 9, wherein the first merchant system is a physical POS system or an online POS system, (see Ozvat, abstract).
13. (Currently Amended) The computer-implemented method of claim 9, wherein the customer identifier comprises a biometric identifier, and wherein the biometric identifier comprises a voice of the customer, a face of the customer, a fingerprint of the customer, a heartbeat of the customer, an iris of the customer, or a retina of the customer, (see Ozvat, ¶ 155).
17. (Original) The system of claim 15, wherein the payment card comprises a proxy card, (see Ozvat, ¶ 159 “In some embodiments, DEP Processing System 1000 utilizing payment management system 120 and/or Payment Client 1025a may act as proxy for a chosen payer so as to conduct a dynamic authentication of a given purchaser 101 using for example a challenge/response sequence based on one of several purchaser pre-configured challenge/responses.”).
19. (Original) The system of claim 15, wherein the customer identifier comprises the contact information, (see Ozvat, ¶ 53 “the presently disclosed systems and methods transfer a token with a unique makeup (including encrypted card data) that enables distributed storage of sensitive information”).
20. (Original) The system of claim 15, wherein the customer identifier comprises at least one of a phone number or an email address, (see Ozvat, ¶ 237 “More mundane information such as business address, zip code, email address and telephone number may also be included in merchant identifying information”).
22. (New) The system of claim 15, wherein the confirmation response comprises one or more alphanumeric characters, (see Ozvat, ¶ 139 “in some embodiments, if purchaser secret information may be required by the chosen payer system(s), for example a 4-digit PIN or perhaps a 5-digit billing zip code, POS display device(s) 1024 may be utilized to prompt purchaser 101 for said purchaser secret information. POS input device(s) 1022 may be utilized to receive purchaser secret information from purchaser 101.”).
23. (New) The system of claim 15, the operations further comprising: responsive to receiving the first transaction information, transmitting, by the PSS and to the customer device, a request for confirmation by the customer that the customer has provided the customer identifier and that the customer identifier is what the customer intended; responsive to transmitting the request for confirmation, receiving, by the PSS and from the customer device, user input data; and based at least in part on the user input data, verifying, by the PSS, that the customer identifier is associated with the customer, wherein storing the association between the customer identifier and the payment card information is based at least in part on verifying that the customer identifier is associated with the customer, (see Ozvat, ¶ 54 “a customer may purchase a good from location A from a franchise retailer. The customer then decides to return the item to location B which is within the same franchise, but may not be owned by the same entity. Instead of denying the transaction, or re-running the card using the presently disclosed system, the token may be leveraged to perform the transaction.”)(emphasis added).
24. (New) The system of claim 15, the operations further comprising: causing, by the PSS, the customer device to auto-populate a billing address or mailing address in one or more text fields of a user interface of the customer device, (see Ozvat, ¶ 95 “Depending on the VEP entity, one or more unique purchaser identifier(s) may be utilized as a substitute for the actual PAN, including but not limited to a telephone number, an email address, a social network ‘handle’, a postal address, a VEP approved user name, or a third party issued account or identification number”).
The remaining claims not specifically addressed above contain the same or similar limitations as those claims rejected above, and therefore the above rejections are applied to the remaining claims herein by reference.
Response to Arguments
Applicant’s arguments and amendments, filed 6/8/26, with respect to the rejection(s) of claim(s) 1-5, 7, 9, 10, 12, 13, 15-17, 19-25 under 102/103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Ozvat.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US-20130060686-A1, US-6901387-B2.
THIS ACTION IS MADE FINAL. 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 RUSSELL S GLASS whose telephone number is (571)272-7285. The examiner can normally be reached M-F, 9-5.
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/RUSSELL S GLASS/ Primary Examiner, Art Unit 3627
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