DETAILED ACTION
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the application filed on 01/16/2025.
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 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-13, and 15-20 of U.S. Patent No. 11,354,651. Although the claims at issue are not identical, they are not patentably distinct from each other. The claims of the instant application and ‘651 patent both recite substantially similar limitations drawn to an electronic device, method and non-transitory computer-readable medium for receiving transaction data from a merchant, storing a dynamically configurable token, providing an indication the token is in a transaction ready state, selecting token data corresponding to the location of the electronic device, configuring the token, routing the token for a transaction and receiving confirmation that the transaction has been completed. The claims of the instant application and ‘651 patent differ in scope in that the ‘651 patent more narrowly claims the transaction data to include a purchase amount and client identifier, while the instant application claims the transaction data to include a payment account identifier, however one having ordinary skill in the art would recognize the payment account identifier could be interpreted to read on a client identifier, and there for the independent claims of the patent claim 1 anticipate this limitation. Additionally, the 651’ patent recites that dynamically configurable token is associated with a plurality of loyalty accounts, while the instant application broadly claims the token to be associated with a user account. However, since the independent claims of the patent anticipates every limitation of the instant application independent claims, the claims are rejected as being double-patenting (see MPEP 2144.04).
Dependent claims 2-9, 11-18, and 20 of instant application are anticipate by claims 1-3, and 5-10 of the ‘651 and therefor are rejected over those claims.
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 the claimed invention is directed to an abstract idea without significantly more, and fails step 2 of the analysis because the focus of the claims is not on the devices themselves or a practical application but rather directed towards an abstract idea, the analysis is provided below.
Step 1 (Statutory Categories) - The claims pass step 1 of the subject matter eligibility test (see MPEP 2106(III)) as the claims are directed towards an electronic device (i.e. system), method and non-transitory computer-readable medium.
Step 2A – Prong One (Do the claims recite an abstract idea?) - The idea is recited in the claims, in part, by:
a dynamically-configurable electronic token associated with a user account;
receive transaction data from a merchant, the transaction data for a transaction between the merchant system and the electronic device, the transaction data including a payment account identifier; and
provide an output indicating that the dynamically-configurable electronic token is in a transaction-ready state upon determining that the payment account identifier corresponds with the user account; and
upon determining that a location of the electronic device corresponds to a location associated with the user account:
select token data associated with the user account corresponding to the location of the electronic device; and
configure the dynamically-configurable electronic token based on the token data; and
route the dynamically-configurable electronic token, generated from the token data corresponding to the location of the electronic device, for processing by an electronic data process at a transaction processing system associated with the user account; and
receive a confirmation that the transaction has been processed.
The steps recited above under Step 2A Prong One of the analysis under the broadest reasonable interpretation covers commercial or legal interactions (including sales activities or behaviors; business relations) but for the recitation of generic computer components. That is other than reciting an electronic device comprising at least one processor, one or more output devices, at least persistent memory, a data communication interface, a merchant system nothing in the claim elements are directed towards anything other than commercial or legal interactions for configuring a payment token to use in a transaction based on transaction data and location of the electronic device and receiving confirmation that the transaction is complete. If a claim limitation, under its broadest reasonable interpretation, covers commercial or legal interactions, then it falls within the “Certain Methods of Organizing Human Activities” groupings of abstract ideas. Accordingly, the claims recite an abstract idea.
Step 2A – Prong Two (Does the claim recite additional elements that integrate the judicial exception into a practical application?) - This judicial exception is not integrated into a practical application. In particular, the claims only recite the additional elements of an electronic device comprising at least one processor, one or more output devices, at least persistent memory, a data communication interface, a merchant system. The electronic device comprising at least one processor, one or more output devices, at least persistent memory, a data communication interface, and a merchant system are recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components and limits the judicial exception to the particular environment of computers. Mere instructions to apply the judicial exception using generic computer components and limiting the judicial exception to a particular environment are not indicative of a practical application (see MPEP 20106.05(f) and MPEP 20106.05(h)). As MPEP 2106.05(f) Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone);. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed towards an abstract idea.
Step 2B (Does the claim recite additional elements that amount to significantly more than the judicial exception?) - The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above, with respect to integration of the abstract idea into a practical application, using the additional elements of electronic device comprising at least one processor, one or more output devices, at least persistent memory, a data communication interface, and a merchant system to perform the steps recited in Step 2A Prong One of the analysis amounts to no more than mere instructions to apply the exception using generic computer components and limits the judicial exception to the particular environment. Mere instructions to apply an exception using generic computer components and limiting the judicial exception to a particular environment does not provide an inventive concept. The additional elements have been considered separately, and as an ordered combination, and do not add significantly more (also known as an “inventive concept”) to the judicial exception. Further, MPEP 2106.05(d)(ii) provides that receiving and transmitting data over a network (see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network), and Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26, 110 USPQ2d 1984-1985 (2014) (see also creating and maintaining "shadow accounts", "create electronic records, track multiple transactions, and issue simultaneous instructions" (, Alice Corp. Pty. Ltd. v. CLS Bank Int'l 573 U.S. at 224-26, 110 USPQ2d at 1984-85);, are well-understood routine and conventional, similar to the instant application claims which recites and sending and receiving data over network for configuring a payment token to use in a transaction based on transaction data and location of the electronic device and receiving confirmation that the transaction is complete. Further, the displaying step (i.e. providing the output) falls to transform the claims into patent eligible material, as this is part of the field of use and technical environment in which the abstract idea is being implement and does not result in an improvement to additional elements (see MPEP 2106.05(h) Electric Power Group court decision). The claims are not patent eligible.
The dependent claims have been given the full analysis including analyzing the additional limitations both individually and in combination as a whole. For instance, the displaying step in claim 2 is akin Electric Power Group as discussed above, claims 3-7 further define abstract concepts and all steps that fall within the “Certain Methods of Organizing Human Activities” groupings of abstract ideas, and claims 8-9 are further describing the technical environment in which the idea is being limited to, generally linking the idea to the distributed ledger which is part of the computer environment. The Dependent claims when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. 101 for the same reasoning as above and the additional recited limitations fail to establish that the claims are not directed to an abstract idea. The additional limitations of the dependent claims when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
No Prior Art Rejections
Based on the prior art search results, the prior art of record fails to anticipate or render obvious the claimed subject matter of the instant application. Specifically, one of ordinary skill in the art would not be motivated to modify the teachings of the prior art to provide the electronic device, non-transitory computer readable medium, and method which perform the operations of:
receiving transaction data from a merchant system, the transaction data for a transaction between the merchant system and the electronic device, the transaction data including a payment account identifier; and
providing via the one or more output devices an output indicating that the dynamically-configurable electronic token is in a transaction-ready state upon determining that the payment account identifier corresponds with the user account; and
upon determining that a location of the electronic device corresponds to a location associated with the user account:
selecting token data associated with the user account corresponding to the location of the electronic device; and
configuring the dynamically-configurable electronic token based on the token data; and
via a data communication interface:
routing the dynamically-configurable electronic token, generated from the token data corresponding to the location of the electronic device, for processing by an electronic data process at a transaction processing system associated with the user account; and
receiving a confirmation that the transaction has been processed.
The closest art of record, US Patent Application Publication 20120036042 to Graylin, et al., discloses “A commerce checkout and customer data capture system for merchants to deliver commerce functionalities to consumer computing devices for completing purchase and payment transactions includes a commerce application and a commerce gateway server comprising a checkout application and a secure payment application. A plurality of merchants are configured to provide product offers to the consumer computing device via the commerce application, to process purchase transactions with the checkout application, and to receive payments via the secure payment application. The checkout application provides responses to purchase transaction requests including "CreateCheckout" for setting up and capturing purchase transaction data, and consumer related data, "Checkout" for calling a checkout transaction user interface, and "GetCheckoutStatus" for checking status of a checkout transaction. The checkout application further captures additional data used to provide fulfillment capabilities, tax calculation, risk management, fraud control, and targeted marketing analytics.”
The closest art of record, US Patent Application Publication 20160071094 to Krishnaia, et al. discloses “A system or method may be provided to implement dynamic hybrid wallet tokens. A payment network architecture may be established to allow a payment service provider to implement seamless flow of payment transactions. Hybrid dynamic wallet tokens may be morphed with additional information based on the types of transactions to be performed and may be communicated over industry payment networks. In particular, the payment service provider may use Industry Standard BINs as tokens to transmit information in lieu of actual funding source information to all interacting parties with the provision of securely allowing each party to de-tokenize via secure connection from the backend to identify the true funding instrument only when needed.”
The closest art of record, US Patent Application Publication 20150254635 to Bondesen, et al., discloses “Systems, methods, and computer program products for limiting the use of a token based on a user location are provided. Embodiments of the invention involve a memory device; and a processing device operatively coupled to the memory device, wherein the processing device is configured to execute computer-readable program code to: receive a payment authorization request associated with a transaction from a merchant, wherein the payment authorization request comprises a transaction information, wherein the transaction is conducted using a token between a user and a merchant; determine a response associated with the payment authorization request based on one or more limits, wherein the one or more limits are based on at least a user location; and transmit the response associated with the payment authorization request to the merchant.”
The closest art of record, US Patent Application Publication 20180101834 to Laracey, et al., discloses “Systems, methods, and computer program products for limiting the use of a token based on a user location are provided. Embodiments of the invention involve a memory device; and a processing device operatively coupled to the memory device, wherein the processing device is configured to execute computer-readable program code to: receive a payment authorization request associated with a transaction from a merchant, wherein the payment authorization request comprises a transaction information, wherein the transaction is conducted using a token between a user and a merchant; determine a response associated with the payment authorization request based on one or more limits, wherein the one or more limits are based on at least a user location; and transmit the response associated with the payment authorization request to the merchant.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY S CUNNINGHAM II whose telephone number is (313)446-6564. The examiner can normally be reached Mon-Fri 8:30am-4pm.
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, Bennett Sigmond can be reached at 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
GREGORY S. CUNNINGHAM II
Primary Examiner
Art Unit 3694
/GREGORY S CUNNINGHAM II/Primary Examiner, Art Unit 3694
Prosecution Insights