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 .
Detailed Action
This action is in response to the application filed on 12/30/2024.
Priority
Acknowledgment is made of applicant's claim for prior priority dates including:
This application is a CON of 18/460,979 09/05/2023 PAT 12183108
18/460,979 is a CON of 17/303,905 06/10/2021 PAT 11763587
17/303,905 is a CON of 16/594,841 10/07/2019 PAT 11037165
16/594,841 is a CON of 16/279,465 02/19/2019 PAT 10438210
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. See 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); and 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) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
All claims are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims of U.S. Patent 10,438,210. Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims speak to systems and methods for query concerning possession of a transaction card by a user of the user device and determine, based on the response, whether the user has possession of the transaction card.
Regarding claim 1, the language within this claim can be found within claim 1 of U.S. Patent No. 10,438,210.
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.
All claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims are directed to a system, method, or product, which are/is one of the statutory categories of invention. (Step 1: YES).
The Examiner has identified independent method Claim 15 (herein called the Primary Independent Claim) as the claim that represents the claimed invention for analysis and is similar to independent system Claim 8 and product Claim 1 (herein called Additional Independent Claims). The Primary Independent Claim recites the limitations of:
A device, comprising: one or more memories; and one or more processors, communicatively coupled to the one or more memories, configured to: transmit, to a user device, a query concerning possession of a transaction card by a user of the user device, wherein the query includes an instruction to confirm, via a contactless read of the transaction card, possession of the transaction card by the user, receive, based on the query and from the user device, a response associated with possession of the transaction card by the user, and determine, based on the response, whether the user has possession of the transaction card.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as “Certain Methods of Organizing Human Activity”. The limitation of at least “receive, based on the query and from the user device, a response associated with possession of the transaction card by the user, and determine, based on the response, whether the user has possession of the transaction card.” recites a fundamental economic practice. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The limitation of at least “one or more memories; and one or more processors, communicatively coupled to the one or more memories” in the Primary Independent Claim is just applying generic computer components to the recited abstract limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. The Additional Independent Claims are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims recite an abstract idea)
This judicial exception is not integrated into a practical application. The examiner did not find any additional elements that would cause further analysis. The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. Therefore, all the independent claims are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware and software per se amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. See MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more as well as MPEP 2106.05(d). Accordingly, these additional elements, do not change the outcome of the analysis, when considered separately and as an ordered combination. Thus, all independent claims are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims further define the abstract idea that is present in their respective independent claims, and thus correspond to Certain Methods of Organizing Human Activity and hence are abstract for the reasons presented above. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the dependent claims are directed to an abstract idea. Thus, all the claims are not patent-eligible.
Claim Objections
Claims 1-20 are objected to because of the following informalities: Appropriate correction is required.
Regarding claim 1:
A device, comprising: one or more memories; and one or more processors, communicatively coupled to the one or more memories, configured to: transmit, to a user device, a query concerning possession of a transaction card by a user of the user device, wherein the query includes an instruction to confirm, via a contactless read of the transaction card, possession of the transaction card by the user, receive, based on the query and from the user device, a response associated with possession of the transaction card by the user, and determine, based on the response, whether the user has possession of the transaction card.
There are two concerns the examiner has
A response – what kind of response should the card holder wave card at the cashier? More specific information is needed since “associated with procession” is not clear or descriptive enough
Determine whether the user has possession – is incomplete. It may be inferred so that a transaction can be processed but it is recommended that be explicated not inferred
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Rofougaran et al., U.S. Patent Pub US 20080238625 A1, discloses a near field communication front-end includes an up conversion module, a plurality of coils, and a down conversion module.
Katzin et al., U.S. Patent Pub US 20120271712, teaches a devices are disclosed for transforming product code snapshots into real-time, offer-driven electronic purchase transaction notifications that minimize fraud.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kirsten Apple whose telephone number is (571)272-5588. The examiner can normally be reached on M-F 9-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Anderson can be reached on (571) 270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KIRSTEN S APPLE/Primary Examiner, Art Unit 3693