Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Status
Claims 1-20 are currently pending and are presented for examination on the merits.
Priority
Applicant's claim of priority to U.S. patent application 13/353,250, filed January 18, 2012 (and progeny), under 35 U.S.C. 120 is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 6/10/2026, 11/4/2025, and 3/3/2025 were filed before the filing of a first office action on the merits. As such, the submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Objections
Specification
The abstract of the disclosure is objected to for use of the term “may.” That is to say, the phrases "Selection of the second device may be received . . . The pairing code may be received . . .” etc., imply that the invention may not include the specified structure, or be configured as basically described, when such is not the case. A brief narrative of the disclosure as a whole is required. See MPEP § 608.01(b).
Drawings
Each sheet must include a top margin of at least 2.5 cm. (1 inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch). Please confirm that the drawings (e.g., FIG. 2A, etc.) are within margins.
The drawings are objected to because the labels, external to objects and boxes, are shown without leader lines, and labels, internal to objects and boxes, are shown without underlining (e.g., FIG. 4, etc.). 37 CFR 1.84(q). External labels shouldn’t be underlined.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Double Patenting
Claim 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,257,048. Although the claims at issue are not identical, they are not patentably distinct from each other because the broader instant claims recite the same limitations contained in the narrower claims of the parent applications. As such, the instant claims are obvious in light of the parent claims.
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 reLongi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Omum, 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 §§ 706.02(1)(1) - 706.02(1)(3) 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 e-Terminal 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.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. § 101, because they recite non-patentable subject matter under MPEP § 2106, e.g., the 2019 PEG, October update. More particularly, the claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, when considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Broad categories of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulas. See, generally, MPEP § 2106; Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
Under MPEP § 2106, Step 1, the claimed invention, taking the broadest reasonable interpretation, recites a process (i.e., a method), machine (e.g., a device, system, etc.), article of manufacture (e.g., a non-transitory computer readable medium) or composition of matter, and as such, is patent eligible.
Under MPEP § 2106, Step 2a-prong 1, Claims 1-20 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). More particularly, the entirety of the method steps is directed towards pairing a customer device with a merchant device. This is a long-standing commercial practice previously performed by humans (e.g., payment platforms, consumers, merchants, etc.) manually and via generic computing, typically as a precursor to conducting a transaction. As such, the inventions include an abstract idea under § 2106, and Alice Corporation.
Under step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., the structure—one or more processors, non-transitory computer-readable medium, and the steps of generating encryption keys, displaying a code, etc.) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)) and/or generally instruct an artisan to apply it (the method) across generic computing technology. A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. See Alice, 573 U.S. at 222; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). That is to say, the claims are not directed to a new software or computer, but rather employs pre-existing software to do what’s been previously done, albeit less efficiently or slower. “[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citations omitted). More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (§ 2106.05(e)).
Under part 2b, the additional elements offered by the dependent claims either further delineate the abstract idea, add further abstract idea(s), adds insignificant extra-solution activity, or further instruct the artisan to apply it (the abstract idea(s)) across generic computing technology. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because no one claim effects an improvement to another technology or technical field, an improvement to the functioning of a computer itself, or move beyond a general link of the use of the abstract idea to a particular technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Under Alice, merely applying structure or executing the abstract idea on one or more generic computer system (e.g., a computer system comprising a generic database; a generic element (NIC) for providing website access, etc.; a generic element for receiving user input; and a generic display on the computer, in any of their forms) to carry out the abstract idea more efficiently fails to cure patent ineligibility. See, e.g., Content Extraction, 776 F.3d at 1347 (claims reciting a “scanner” are nevertheless directed to an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea). Moreover, merely reciting steps that can be performed in the human mind is not patent eligible (see, e.g., Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (Fed. Cir. 2011) (collecting and comparing data are mental steps); Braemar Mfg. LLC v. ScottCare Corp., 816 F. App’x 465, 470 (“Claims that “merely collect, classify, or otherwise filter data” are ineligible for patent under § 101.”); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-72 (Fed. Cir. 2011) (comparing a collected list of credit card numbers to transactions to identify different cards and user names used from the same IP address to detect fraud can be performed entirely in the human mind including the logical reasoning.)) “The requirements that the machine learning model be “iteratively trained’ or dynamically adjusted in Machine Learning Training patents do[es] not represent a technological improvement.” Recentive Analytics, 134 F 4th at 1212. Claim language reciting the machine learning model at a high level of generality without any specificity of how the machine learning model is trained or processes the data. The machine learning model is merely used as a tool to implement the abstract idea. Id. at 1213 (claims recite ineligible subject matter where “the only thing the claims disclose about the use of machine learning is that machine learning is used in a new environment”).
Lastly, courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data, MPEP 2106.05(d), wherein the italicized tasks are particularly germane to the instant invention.
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)(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.
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 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.
Claims 1-4, 6-10, 12-15, and 17-20 are rejected under 35 U.S.C. §102(a)(1) as being anticipated by US 2012/0019361 to Ben Ayed et al.
With respect to Claim 1, Ayed teaches a first device for enhancing security of paired devices, the first device comprising: one or more processors; and non-transitory computer-readable media ([0031];[0200]) storing instructions that, when executed by the one or more processors, cause the first device to perform operations comprising: generating encryption keys associated with pairing devices ([0216], see keys/public key throughout); connecting the first device to a wireless network (See Bluetooth system 20 throughout); receiving a list of available devices on the wireless network ([0142]), the list of available devices including a second device ([0213];FIG. 4, 46); receiving first input data indicating selection of the second device for pairing with the first device ([0140-41];FIG. 4); based at least in part on receiving the first input data, sending a request to the second device ([0142];FIG. 4, 48), the request causing an application ([0143-45])residing on the second device to initiate and display a user interface with a prompt to confirm that the first device and the second device are to be paired ([0142], requesting a PIN code teaches displaying request for confirmation); displaying, based at least in part on sending the request, a user interface field configured to receive entry of a pairing code as displayed on the second device in response to pairing confirmation received at the second device ([0142], PIN code); receiving second input data in the user interface field corresponding to the pairing code ([0142-45]); receiving, from the second device, a message ([0087]) indicating that the pairing code has been verified and that pairing has been accepted at the second device ([0145]); and pairing the first device to the second device based at least in part on receiving the message such that secure communications between the first device and the second device are available utilizing the encryption keys ([0087-88];[0105-06];[0145];[0216]; FIG. 6).
With respect to Claim 2, Ayed teaches wherein the first device is a merchant-facing device and the second device is a customer-facing device. [0093]
With respect to Claim 3, Ayed teaches wherein the first device is a customer-facing device and the second device is a merchant-facing device. [0093];[0143];FIG. 5
With respect to Claim 4, Ayed teaches receiving, from the second device, a description of capabilities of the second device as published to the wireless network; determining data types associated with the capabilities of the second device; accepting first data associated with the data types; and refusing to accept second data associated with other data types that differ from the capabilities of the second device. ([0068];[0071];[0143])
With respect to Claim 6, Ayed teaches determining that the second device is removed from the wireless network; disabling communication between the first device and the second device based at least in part on the second device being removed from the wireless network; storing an indicator of the second device as a trusted device; determining that the second device is returned to the wireless network; and enabling communication between the first device and the second device based at least in part on the indicator of the second device being stored as the trusted device. ([0020];[0068], trusted pair; [0094], the application or device may logout the user)
With respect to Claim 7, Ayed teaches storing a first instance of the application at the first device; and receiving an indication that a second instance of the application has been stored in association with the second device, and wherein sending the request to the second device is based at least in part on the first device storing the first instance of the application and the second device storing the second instance of the application. [0143-45]
With respect to Claim 8, Ayed teaches a method for enhancing security of paired devices, the method comprising: connecting a first device to a wireless network ([0066-71], see Bluetooth network throughout); receiving a list of available devices on the wireless network, the list of available devices including a second device; receiving a selection of the second device; based at least in part on receiving the selection, sending a request to the second device, the request causing an application residing on the second device to initiate and display a user interface with a prompt to confirm that the first device and the second device are to be paired; displaying, based at least in part on sending the request, a user interface field configured to receive a pairing code as displayed on the second device when pairing confirmation is received at the second device; receiving the pairing code in the user interface field; receiving, from the second device, a message indicating that the pairing code has been verified; and pairing the first device to the second device based at least in part on receiving the message such that secure communications between the first device and the second device are available. (see Claim 1)
With respect to Claim 9, Ayed teaches parsing the list of available devices on the wireless network based at least in part on a specific version of the application, the second device included in a parsed list of available devices. [0070]
With respect to Claim 10, Ayed teaches initiating, based at least in part on receiving the list of available devices, an instance of the application on the first device and causing the list of available devices to automatically be displayed via the application, wherein receiving the pairing code comprises receiving the pairing code via the application as automatically displayed. ([0071];[0142], Bluetooth searching/pairing functionality)
With respect to Claim 12, Ayed teaches wherein sending the request is based at least in part on the first device being a merchant-facing device; and displaying the user interface field is based at least in part on the second device being a customer-facing device. [0093];[0143]
With respect to Claim 13, Ayed teaches wherein: sending the request is based at least in part on the first device being a customer-facing device; and displaying the user interface field is based at least in part on the second device being a merchant-facing device. [0093];[0143]
With respect to Claim 14, Ayed teaches receiving, from the second device, a description of capabilities of the second device as published to the wireless network; determining data types associated with the capabilities of the second device; accepting first data associated with the data types; and refusing to accept second data associated with other data types that differ from the capabilities of the second device. ([0068];[0071];[0143])
With respect to Claim 15, Ayed teaches a system, comprising: one or more processors; and non-transitory computer-readable media storing instructions (FIGS. 1,2; see “system” throughout; see “memory” throughout) that, when executed by the one or more processors, cause the system to perform operations comprising: connecting a first device to a wireless network; receiving a list of available devices on the wireless network, the list of available devices including a second device; receiving a selection of the second device; based at least in part on receiving the selection, sending a request to the second device, the request causing an application residing on the second device to initiate and display a user interface with a prompt to confirm that the first device and the second device are to be paired; displaying, based at least in part on sending the request, a user interface field configured to receive a pairing code as displayed on the second device when pairing confirmation is received at the second device; receiving the pairing code in the user interface field; receiving, from the second device, a message indicating that the pairing code has been verified; and pairing the first device to the second device based at least in part on receiving the message such that secure communications between the first device and the second device are available. (See Claim 8)
With respect to Claim 17, Ayed teaches determining that the second device is removed from the wireless network; disabling communication between the first device and the second device based at least in part on the second device being removed from the wireless network; storing an indicator of the second device as a trusted device; determining that the second device is returned to the wireless network; and enabling communication between the first device and the second device based at least in part on the indicator of the second device being stored as the trusted device. ([0020];[0068], trusted pair; [0094], the application or device may logout the user)
With respect to Claim 18, Ayed teaches storing a first instance of the application at the first device; and receiving an indication that a second instance of the application has been stored in association with the second device, and wherein sending the request to the second device is based at least in part on the first device storing the first instance of the application and the second device storing the second instance of the application. [0143-45]
With respect to Claim 19, Ayed teaches parsing the list of available devices on the wireless network based at least in part on a specific version of the application, the second device included in a parsed list of available devices. [0070]
With respect to Claim 20, Ayed teaches initiating, based at least in part on receiving the list of available devices, an instance of the application on the first device and causing the list of available devices to automatically be displayed via the application, wherein receiving the pairing code comprises receiving the pairing code via the application as automatically displayed. ([0071];[0142], Bluetooth searching/pairing functionality)
Claim Rejections - 35 USC § 103
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
a. Determining the scope and contents of the prior art.
b. Ascertaining the differences between the prior art and the claims at issue.
c. Resolving the level of ordinary skill in the pertinent art.
d. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 5 and 16 are rejected under § 103, for being unpatentable over Ayed, in view of US 2012/0109830 to Vogel.
With respect to Claims 5, and 16, Ayed fails to expressly teach, but Vogel teaches receiving, from the second device, a description of capabilities of the second device as published to the wireless network; determining complementary capabilities of the first device; filtering the capabilities of the second device based at least in part on the complementary capabilities such that filtered capabilities of the second device are determined; and utilizing the filtered capabilities of the second device to communicate between the first device and the second device. ([0018-19], setting filters). Vogel discusses a need for a system that “ensures secure file transfer by using public key/private key pair.” [0007-09] As such, it would have been obvious to one of ordinary skill in the art to modify Ayed, to include filtering capabilities in the second device as recited herein and taught by Vogel, in order to further ensure secure file transfer between paired devices.
Claim 11 is rejected under § 103, as being unpatentable over Ayed, alone.
With respect to Claim 11, Ayed teaches publishing communication availability on the wireless network ([0069]); receiving a pairing request from a third device on the wireless network, the pairing request causing an instance of the application residing on the first device to initiate and request confirmation that the first device and the third device are to be paired; based at least in part on receiving the confirmation, displaying, on the first device, a second pairing code; receiving, from the third device, the second pairing code; verifying that the second pairing code as displayed on the first device corresponds to the second pairing code as received from the third device; and pairing the first device to the third device based at least in part on verifying the second pairing code such that the secure communications between the first device and the third device are available. Claim 11 recites pairing with a third device repeating the same steps as when pairing with the second device. It is noted that mere redundancy, duplicity, or repetition of existing structure or steps has been deemed obvious under § 103 analysis. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. See also, MPEP § 2144.05 which states: In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) As such, it would have been obvious to modify Ayed to include a third device redundantly paired like the second device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J JACOB whose telephone number is (571)270-3082. The examiner can normally be reached on M-F 8:00-5:00, alternating Fri. off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart can be reached on 5712723955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM J JACOB/ Examiner, Art Unit 3696
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