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 1-2, 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
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 furthest in a future and within a first 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 § 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 1-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, recite the limitation "furthest in a future and within a first duration of time". The first duration of time is arbitrarily set, not determined or based on anything specified in the claim and is therefore indefinite and vague.
Claims 2-7, 9-14, and 16-20 are rejected due to their dependencies from claims 1, 8, and 15, respectively.
Claim Rejections - 35 USC § 102
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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) 1-20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Piparsaniya US 2022/0327539.
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, wherein a billing cycle comprises a time between recurring incoming charges received from a merchant corresponding to an active account with the merchant (Fig 3B, [0057]-[0060]);
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 a first billing cycle furthest in a future and within a first 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).
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 a 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 a 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, the 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 first 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. Thomas US 2023/0131942
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