DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s response/application filed on 01/14/2025.
The Examiner notes that citations to United States Patent Application Publication paragraphs are formatted as [####], #### representing the paragraph number.
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 .
Status of Claims
Claims 1-20 are currently pending and have been examined.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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 eTerminal 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/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 5, 6, 8, 9, 10, 11, 12, 13, 14, 15, 16, 18, 19, 20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 1, 1, 6, 7, 8, 9, 10, 11, 12, 9, 9, 14, 15, 16 of U.S. Patent No. 12236433 (reference patent), respectively. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent includes all the limitations of the instant claims.
Claim 7, 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 9 of U.S. Patent No. 12236433 in view of Agrawal (US 20190019190). The instant claims 7 and 17 different than the claims 1 and 9 of the reference patent in that the instant claims 1 and 11 recite a limitation “verify that the second override password is a valid password associated with the value transfer card, and wherein the at least one second card control setting associated with the second override password is determined to define the override condition in response to successful verification of the second override password”. However, Agrawal discloses this limitation by disclosing, “Each received biometric is then verified and, once verified, converted to the character assigned thereto” ([0014] of Agrawal); and Table 2 discloses that different biometric combinations correspond to different processing rules, and using a second biometric combination will automatically disable the rules associated with a first biometric combination, thus there must have an override condition such that the transaction will be processed according to the rule associated with the second biometric combination instead of the rule associated with the first biometric combination (Table 2 and [0077] of Agrawal). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of the instant application in view of Agrawal to include this limitation in order to increase the security of the claimed invention by verifying the password.
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, 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(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-8, 11-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Agrawal (US 20190019190), in view of Shi (CN 105956856 A), further in view of Barnum (US 10803463).
Regarding claim(s) 1 and 11, Agrawal discloses:
a processor ([0091] of Agrawal); and
a memory coupled to the processor, the memory storing computer-executable instructions ([0091] of Agrawal) that, when executed by the processor, configure the processor to:
detect a transaction initiated at a terminal device using a value transfer card (By disclosing, “In this exemplary embodiment, initially, the consumer 114 attempts to make a purchase at a physical storefront of the merchant 102. In connection with the purchase attempt, the consumer 114 presents, at 402, a payment device associated with his/her payment account to the merchant 102, whereupon the payment device [(value transfer card)] is provided to and/or read by the POS terminal [(terminal device)] (as shown in FIG. 4) at the merchant 102 (e.g., a payment account credential (e.g., the PAN, or a token, etc., for the payment account) is read from the payment device, etc.). The merchant 102 then, via the POS terminal, prompts, at 404, the consumer 114 to enter his/her biometric PIN for the payment account.” ([0062], [0015] of Agrawal));
receive, via the terminal device, input of a first authentication password associated with the value transfer card during a card session (By disclosing, a payment device card 124 associated with a plurality of PINs ([0021] and Table 2 of Agrawal); and “the consumer 114 provides the fingerprint data, in the order corresponding to his/her PIN for the payment account (i.e., through presentation of a series or sequence of biometric data), to the merchant 102, via a point-of-sale (POS) terminal ([terminal device])” ([0034] of Agrawal));
identify at least one first card control setting associated with the first authentication password that defines one or more transaction restrictions (By disclosing, “The associated PIN is then passed to the issuer of the payment account (in the authorization request) whereby the issuer may apply one or more rules ([transaction restrictions]), specific to the associated PIN, to the transaction (e.g., a transaction limit rule, a merchant restriction rule, etc.). In this manner, biometric combination may be used by the consumer, in lieu of a single PIN, to provide enhanced transaction security and/or whereby multiple different PINs may be employed and associated with different rules” ([0015] and Table 2 of Agrawal));
receive, via the terminal device, input of a second override password associated with the value transfer card (By disclosing, “wherein the data structure includes second reference biometric data and a second associated PIN; and wherein the authentication engine computing device is configured to convert the biometric combination to the second associated PIN when the fingerprint data is consistent with the second reference biometric data” (Claim 19 of Agrawal); and “identify at least one second rule when the second associated PIN is appended to the authorization request” (Claim 20 of Agrawal));
determine that at least one second card control setting associated with the second override password defines an override condition for disabling the at least one first card control setting for the card session (Table 2 discloses that different biometric combinations correspond to different processing rules, and using a second biometric combination will automatically disable the rules associated with a first biometric combination, thus there must have an override condition such that the transaction will be processed according to the rule associated with the second biometric combination instead of the rule associated with the first biometric combination (Table 2 and [0077] of Agrawal)); and
process the transaction based on disabling the at least one first card control setting (By disclosing, “wherein the data structure includes second reference biometric data and a second associated PIN; and wherein the authentication engine computing device is configured to convert the biometric combination to the second associated PIN when the fingerprint data is consistent with the second reference biometric data” (Claim 19 of Agrawal); “identify at least one second rule when the second associated PIN is appended to the authorization request” (Claim 20 of Agrawal); and “Once the one or more rules is identified, the issuer 108 is configured to apply the rules to the transaction, and specifically, the authorization request, to determine, at least in part, whether to approve or decline the transaction.” ([0045], and Table 2 of Agrawal)).
Agrawal does not disclose:
receive, via the terminal device, input of a first authentication password associated with the value transfer card during a card session that begins when the value transfer card is inserted into the terminal device;
in response to determining that the transaction is not permitted based on the at least one first card control setting: receive, via the terminal device, input of a second override password associated with the value transfer card during the card session.
However, Shi teaches:
receive, via the terminal device, input of a first authentication password associated with the value transfer card during a card session that begins when the value transfer card is inserted into the terminal device (By disclosing, “secondly, the credit IC card inserted in the bank automatic teller machine teller opportunity prompting the payee to input the password, the password if the payee inputs and set when the account code, the money teller output to the payee, if password is not correct will be teller refuses to pay.” ([0006] of Shi)); and
receive, via the terminal device, input of a second override password associated with the value transfer card during the card session (By disclosing, “Furthermore, the method further comprises:
receiving a first password, second password of the bank card account number and setting and modifying the financial rights of the second password.” ([0018] and claim 4 of Shi)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Agrawal, in view of Shi to include techniques of receive, via the terminal device, input of a first authentication password associated with the value transfer card during a card session that begins when the value transfer card is inserted into the terminal device; and receive, via the terminal device, input of a second override password associated with the value transfer card during the card session. Doing so would result in an improved invention because the insertion style card reader is dominant nowadays in merchant locations, and this would allow the value transfer card being used in all the merchant locations with an insertion style card reader, thus expanding the scope of the use. Doing so would result in an improved invention because this would also allow the user to choose a different processing type.
And Barnum teaches:
in response to determining that the transaction is not permitted based on the at least one card control setting associated with a first payment method: receive, via the terminal device, input of a second payment method. (By disclosing, the user can set transaction limitations associated with a payment method (Col 2 line 63- Col 3 line 11); the transaction is rejected if the transaction does not satisfy the transaction limitations associated with the payment method (Col 8 lines 12-22); and “On the other hand, if authorization result AR1 indicates a rejection, POS terminal 500 can display a reason for rejection or an error code and ask user U1 to reinitiate the transaction with another payment method.” (Col 13 lines 39-43)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the combination of Agrawal and Shi, in view of Barnum to include techniques of in response to determining that the transaction is not permitted based on the at least one card control setting associated with a first payment method: receive, via the terminal device, input of a second payment method. Doing so would result in an improved invention because this would allow the user to choose a different processing method for the transaction.
Regarding claim(s) 2 and 12, Agrawal discloses:
wherein the terminal device comprises one of a point- of-sale (POS) terminal or an automated teller machine (ATM). (By disclosing, “the consumer 114 provides the fingerprint data, in the order corresponding to his/her PIN for the payment account (i.e., through presentation of a series or sequence of biometric data), to the merchant 102, via a point-of-sale (POS) terminal” ([0034] of Agrawal)).
Regarding claim(s) 3 and 13, Agrawal discloses:
wherein the first authentication password comprises a personal identification number (PIN). (By disclosing, “the consumer 114 provides the fingerprint data, in the order corresponding to his/her PIN for the payment account (i.e., through presentation of a series or sequence of biometric data), to the merchant 102, via a point-of-sale (POS) terminal” ([0034] of Agrawal)).
Regarding claim(s) 4 and 14, Agrawal discloses:
wherein the at least one first card control setting defines one or more transaction limits for transactions that are executed using the value transfer card. (By disclosing, “The associated PIN is then passed to the issuer of the payment account (in the authorization request) whereby the issuer may apply one or more rules, specific to the associated PIN, to the transaction (e.g., a transaction limit rule, a merchant restriction rule, etc.)” ([0015] of Agrawal)).
Regarding claim(s) 5 and 15, Agrawal does not disclose, but Shi teaches:
wherein the input of the second override password is received subsequent to the input of the first authentication password during the card session. (By disclosing, “Furthermore, the method further comprises:
receiving a first password, second password of the bank card account number and setting and modifying the financial rights of the second password.” ([0018] and claim 4 of Shi)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Agrawal and Barnum, in view of Shi to include techniques of wherein the input of the second override password is received subsequent to the input of the first authentication password during the card session. Doing so would result in an improved invention because this would also allow the user to choose a different processing method for processing the transaction.
Regarding claim(s) 6 and 16, Agrawal does not disclose, but Shi teaches:
wherein the input of the second override password is received subsequent to display of the at least one card control setting on the terminal device during the card session. (By disclosing, “step S10, a first password to the account when the user starting the online banking system 11 and input the correct account password login to a bank account, the setting module 100 receives user setting of a bank account number. the first code as a normal password, inputting the first password can display correct account information, such as the actual account balance and account transaction authority. the account transaction authority including, for example, the account per day maximum withdrawal amount, payment each time the maximum amount on line and so on.
step S11, one or more second password of the bank card of the setting module 100 further receives the account number set by the user.” ([0069]-[0071] of Shi)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Agrawal and Barnum, in view of Shi to include techniques of wherein the input of the second override password is received subsequent to display of the at least one card control setting on the terminal device during the card session. Doing so would result in an improved invention because this would also allow the user to modifying the card control settings for different passwords.
Regarding claim(s) 7 and 17, Agrawal discloses:
wherein the instructions, when executed, configure the processor to verify that the second override password is a valid password associated with the value transfer card, and wherein the at least one second card control setting associated with the second override password is determined to define the override condition in response to successful verification of the second override password. (By disclosing, “Each received biometric is then verified and, once verified, converted to the character assigned thereto” ([0014] of Agrawal); and Table 2 discloses that different biometric combinations correspond to different processing rules, and using a second biometric combination will automatically disable the rules associated with a first biometric combination, thus there must have an override condition such that the transaction will be processed according to the rule associated with the second biometric combination instead of the rule associated with the first biometric combination (Table 2 and [0077] of Agrawal)).
Regarding claim(s) 8 and 18, Agrawal discloses:
wherein the override condition indicates a substitute setting, and wherein processing the transaction comprises applying the substitute setting in place of one of the first card control settings associated with the first authentication password. (Table 2 discloses that different biometric combinations correspond to different processing rules, and using a second biometric combination will automatically disable the rules associated with the first biometric combination, thus there must have an override condition with a substitute setting such that the transaction will be processed according to the rule associated with the second biometric combination instead of the rule associated with the first biometric combinations (Table 2 and [0077] of Agrawal)).
Claim(s) 9, 10, 19, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Agrawal (US 20190019190), in view of Shi (CN 105956856 A), further in view of Barnum (US 10803463), and Safahi (US 20100243730).
Regarding claim(s) 9 and 19, Agrawal discloses:
wherein the value transfer card is associated with a plurality of accounts and wherein the at least one first card control setting associated with the first authentication password indicates an identity of an account that is to be used for the transaction. (By disclosing, “in connection with a transaction using his/her payment account, the consumer is prompted to enter the biometric PIN, whereby the consumer enters his/her PIN for the payment account by sequentially presenting the biometric corresponding to each character of his/her PIN. Each received biometric is then verified and, once verified, converted to the character assigned thereto. When all received biometrics are verified, the characters then form an actual PIN, which is provided to an issuer of the consumer's payment account as part of the approval process for the transaction.” ([0035] of Agrawal)).
Agrawal does not disclose:
wherein the value transfer card is associated with a plurality of accounts.
However, Safahi teaches:
wherein the value transfer card is associated with a plurality of accounts (By disclosing, “The database of virtual numbers 550 contains a table that associates the card number 551 of a multi-currency card 100 with a series of virtual numbers 552. Each of these virtual card numbers corresponds to a virtual card in a particular currency. As an example, virtual card number YYYY is a virtual card in dollars and ZZZZ is a virtual card in euros.” ([0049] of Safahi)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of wherein the at least one card control setting associated with the first password indicates an identity of an account that is to be used for the transaction, in view of Safahi to include techniques of wherein the value transfer card is associated with a plurality of accounts. Doing so would result in an improved invention because this would allow a user perform different types of transaction by using only one value transfer card, thus improving the overall user convenience of the claimed invention.
Regarding claim(s) 10 and 20, Agrawal does not disclose:
wherein the plurality of accounts includes a default currency account and one or more foreign currency accounts.
However, Safahi teaches:
wherein the plurality of accounts includes a default currency account and one or more foreign currency accounts. (By disclosing, “The database of virtual numbers 550 contains a table that associates the card number 551 of a multi-currency card 100 with a series of virtual numbers 552. Each of these virtual card numbers corresponds to a virtual card in a particular currency. As an example, virtual card number YYYY is a virtual card in dollars and ZZZZ is a virtual card in euros.” ([0049] of Safahi); and “a consumer traveling in Europe may change his or her default currency to Euros and conduct transactions directly in Euros rather than having the default currency set to Dollars and paying conversion fees for converting Dollars to Euros.” ([0037] of Safahi)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of wherein the value transfer card is associated with a plurality of accounts, in view of Safahi to include techniques of wherein the plurality of accounts includes a default currency account and one or more foreign currency accounts. Doing so would result in an improved invention because this would allow a user perform different types of transaction with different types of currencies by using only one value transfer card, thus improving the overall user convenience of the claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20070250920 to Lindsay for disclosing:
Security systems for protecting assets are described, including password-based security systems that can provide different levels of access responsive to entry of a primary or secondary password. In some versions, user-configurable security rules can provide customized responses to entry of primary or secondary passwords, including feigned or limited access, security alerts, etc. Passwords comprising overt and covert components can be used to provide enhanced security and improved user control over system response. Improved security systems involving transactions between multiple parties are also considered, with options for user-customized security rules including primary and secondary passwords, and reverse challenge and response methods. Systems for Limited Use Credentials are also disclosed to reduce the risk of identity theft.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DUAN ZHANG whose telephone number is (571)272-4642. The examiner can normally be reached Mon - Fri 10 AM-5 PM.
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/DUAN ZHANG/Primary Examiner, Art Unit 3699