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 .
Response to Arguments
Applicant's arguments filed 16 September 2026 with respect to the Double patenting rejection have been fully considered but they are not persuasive. Applicant presents no additional arguments as to the double patenting rejection.
Applicant's arguments filed 16 September 2026 with respect to the 103 rejection have been fully considered but they are not persuasive. Applicant’s amendments are addressed below in the updated grounds of rejection in view of Edwards.
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 1-2, 8-9, and 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 16, and 19 of U.S. Patent No. 12205104. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims contain all of the limitations of the current claims even though the current claims do not contain all the additional limitations of the patented claims, which the current claims could be rejected under 102 of the patented claims.
18980771 claim 1
12205104 claim 1
receiving, by the first application and from a machine learning model trained on a plurality of incoming charge data originating from a plurality of merchants, a plurality of billing cycles for the first merchant, […]where a billing cycle is a time between recurring incoming charges received from a merchant corresponding to an active account with the merchant
receiving, by the first application and from a machine learning model trained on a plurality of incoming charge data originating from a plurality of merchants, a plurality of billing cycles for the first merchant, where a billing cycle is a time between recurring incoming charges received from a merchant corresponding to an active account with the merchant
Determining, by the machine learning model that analyzes the plurality of incoming charge data, a billing cycle of the plurality of billing cycles for the first merchant
Determining, by the first application and based on the first charge amount, a first billing cycle in the plurality of billing cycles
generating, by the first application and as part of the first transaction, a first virtual card number (VCN) for a first user
generating, by the first application and as part of the first transaction, the first VCN
setting a deactivation date of the first VCN, wherein the deactivation date is after the last charge date determined based on an iteration of a first billing cycle and within a duration of time
setting a deactivation date of the first VCN, wherein the deactivation date is after the last charge datewhere the last charge date is associated with an iteration of the first billing cycle furthest in the future and within the first duration of time
deactivating the first VCN on the deactivation date, where a deactivated VCN blocks all future incoming charges associated with the first VCN.
deactivating the first VCN on the deactivation date, where a deactivated VCN blocks all incoming charges.
Claim 2 is also anticipated by claim 1 of the ‘104 patent.
Claims 8 and 9 are anticipated by claim 16 of the ‘104 patent.
Claims 15 and 16 are anticipated by claim 19 of the ‘104 patent.
Claims 3-7, 10-14, and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 16, and 19 of U.S. Patent No. 12205104 in view of Piparsaniya US 20220327539. Fig 3A of Piparsaniya disclose the features of the dependent claims including claims 3, 10, 17 “causing, by the first application display of a notification on the mobile device wherein the notification comprises a prompt for the first user to generate a VCN” (‘306’ Fig 3A), claims 4, 11, 18 Fig 3A ‘306’ and ‘310’; claims 5, 12, 19 [0063]-[0064], claims 6, 13 [0059], [0106], and claims 7, 14, 20 [0042], [0052], [0067].
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Piparsaniya US 2022/0327539 in view of Edwards US 2020/0342443.
As per claim 1:
Piparsaniya discloses a computer implemented method comprising: receiving, by a first application executing on a mobile device and from a machine learning model trained on a plurality of incoming charge data originating from a plurality of merchants, a plurality of billing cycles for a first merchant, (Fig 3B, [0057]-[0060])
determining a billing cycle of the plurality of billing cycles for the first merchant wherein a billing cycle comprises a time between recurring incoming charges received from a merchant corresponding to an active account with the merchant; ([0024] “A payment transaction is performed during each recurring period, such as monthly, quarterly, half-yearly, or annually”, [0057] “The recurring payment transactions would be for recurring payments to the merchant 106 during the subscription period of the content streaming service, such as monthly payments for a two-year subscription period.” See also [0059] “The recurring payment transactions details include a start date, an end date, and a recurring period duration. The start date refers to the start of the contractual period and determines a first recurring period in the series of recurring periods. The end date refers to the end of the contractual period and determines a final recurring period in the series. The recurring period duration relates to the frequency of the recurring payment transactions and determines a number of discrete recurring periods in the series”). generating, by the first application and as part of a first transaction, a first virtual card number (VCN) for a first user (Fig 3A, [0054]);
setting a deactivation date of the first VCN, wherein the deactivation date is after a last charge date determined based on an iteration of the billing cycle and within a duration of time ([0056]-[0065]); and
deactivating the first VCN on the deactivation date, wherein a deactivated VCN blocks all future incoming charges associated with the first VCN ([0059], Fig 3B).
Piparsaniya fails to explicitly disclose but Edwards does disclose by the machine learning model that analyzes the plurality of incoming charge data ([0054] “As an example application of a machine learning algorithm, the server may analyze the account transaction history using the machine learning algorithm to determine transaction partners with whom the account holder executes recurring transactions. Based on the dates and times of transactions with certain transaction partners, a frequency of transactions with certain transaction partners, a similarity in values of transactions with certain transaction partners, or a combination of the foregoing, the server may determine that the account holder executes recurring transactions with certain transaction partners”, see also [0077]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include a machine learning model as taught in Edwards in Piparsaniya since the claimed invention is merely a combination of old elements, and in combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Both are in the art of recurring transactions and it would have been obvious to a person skilled in the art to combine the art of Edwards and Piparsaniya in order to use the recommendation of Edwards that uses machine learning because ML algorithms are used to detect patterns, which determining a pattern of billing cycles would yield predictable results. Additionally, Edwards analyzes recurring transactions such as periodic payments and based on the dates and times of transactions determines which transactions are performed periodically and it would have been obvious to determine the billing cycles because the dates and times are analyzed to determine patterns.
As per claim 2:
Piparsaniya further discloses the method of claim 1, wherein the first merchant is identified by: detecting, by the first application and based on the first user initiating the first transaction on the mobile device, the first merchant (Fig 3A ‘306’, [0057]-[0060]).
As per claim 3:
Piparsaniya further discloses the method of claim 2, further comprising: causing, by the first application, display of a notification on the mobile device, wherein the notification comprises a prompt for the first user to generate the first VCN (Figs 3A&B, [0057]-[0060]).
As per claim 4:
Piparsaniya further discloses the method of claim 1, wherein receiving the plurality of billing cycles for the first merchant is based on: receiving, by the first application and via the mobile device, an indication from the first user to generate the first VCN (Figs 3A&B, [0057]-[0060]).
As per claim 5:
Piparsaniya further discloses the method of claim 1, wherein generating the first VCN further comprises: receiving, via the first application and from the first user, an indication of a first amount of money to be available to the VCN (Figs 3A&B, [0057]-[0060]); and
selecting, by the first application and from the plurality of billing cycles, a first billing cycle, wherein the first billing cycle corresponds to a maximum duration of time an account with the first merchant may be active based on the first amount of money (Figs 3A&B, [0057]-[0060]).
As per claim 6:
Piparsaniya further discloses the method of claim 1, wherein the a billing cycle is selected based on a maximum duration of time an account with the first merchant may be active (Figs 3A&B, [0057]-[0060]).
As per claim 7:
Piparsaniya further discloses the method of claim 1, wherein deactivating the VCN further comprises: causing, by the first application and on the mobile device, display of a notification indicating that the VCN is deactivated (Fig 5 ‘518’, [0091]).
As per claims 8-14:
Claims 8-14 are rejected under the rationales of claims 1-7, respectively.
As per claims 15-20:
Claims 15-20 are rejected under the rationales of claims 1-5 and 7, respectively.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Breck US 2004/0210449.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID P SHARVIN whose telephone number is (571)272-9863. The examiner can normally be reached M-F 9 am - 5 pm EST.
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/DAVID P SHARVIN/Primary Examiner, Art Unit 3692
