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 final office action is prepared in response to amendments and arguments filed by Applicant on September 14, 2026 as a reply to the non-final office action mailed on May 13, 2026.
Claims 4, 5 and 20 have been amended.
Claims 1-20 are pending.
Claims 1-20 are rejected.
Response to Arguments
The claim amendments and Applicant’s arguments filed on September 14, 2026 have been carefully considered.
The rejection of claims for double patenting is withdrawn as the ground of rejection has been overcome by the terminal disclaimer that is filed on September 14, 2026.
The ground of rejection under 35 U.S.C. 102(a)(1) based on Wong et al. (US 2015/0046339) is maintained. Applicant’s arguments have been considered but deemed unpersuasive in view of Examiner’s updated rejection rationale.
Accordingly, THIS ACTION IS MADE FINAL. See MPEP 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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.
Claims 1-3, 5-13, and 16-20 are rejected under 35 U.S.C. 102(a)(1) as being unpatentable over Wong et al. (U.S. 2015/0046339).
Regarding claim 1, Wong disclosed a method comprising:
receiving, by a directory server from an access device, a first authentication request message comprising a credential or a token (Wong disclosed in Fig. 3 and [0073] that the wallet provider 210 “transmits a check account message 352 for one or more accounts of the user 107 to the service provider 230. … this check account message 352 includes one or more PANs of accounts of the user (or other types of account identifiers), which may have been provided by the user 107 (e.g., to the wallet provider) at an earlier time.” In other words, Wong’s service provider 230 receives the PAN/credentials 350 from the wallet provider. Therefore, Wong’s wallet provider 210 anticipates the “access device” in the claim and Wong’s service provider 230 anticipates the “directory server” in the claim);
determining, by the directory server, an access control server using the credential or the token in the first authentication request message (Wong disclosed in [0046] that “The PAN included in the authorization request message may be used by the payment processing network 105 to identify the appropriate issuer computer 106 for the purpose routing or processing” Wong’s issuer 240 anticipates the “access control server” in the claim.);
transmitting, by the directory server to the access control server, the first authentication request message (Wong disclosed in Fig. 3 and [0074] that “the service provider 230 transmits an account eligibility request message 354 to the issuer 240, and the issuer 240 will then verify the eligibility at block 306 and return an account eligibility response message 356 indicating the eligibility of the account(s)”),
wherein the access control server is programmed to transmit a one-time password to a user device associated with a user (Wong disclosed in Fig. 4 and [0103] that After receipt of the consumer authentication request message 464, the issuer 240 contacts the user 107 via the selected delivery choice mechanism (see message 466) to provide the user 107 with the generated DVV” and in [0116] that “In some embodiments, the DVV comprises a one-time password (OTP).”);
receiving, by the directory server from the access device, a second authentication request message comprising the credential or the token, and the one-time password (Wong disclosed in Fig. 4 and [0105] that “the wallet provider 210 may transmit to the service provider 230 a Resume Account message 470, which includes the entered-DVV (from message 468) along with an identifier of the respective account (e.g., a PAN, a reference ID, the inactive token, etc.)” Wong’s Resume Account message 470 (w/DVV) anticipates the “second authentication request message” in the claim.);
determining, by the directory server, the access control server using the credential or the token in the second authentication request message (Wong disclosed in [0046] that “The PAN included in the authorization request message may be used by the payment processing network 105 to identify the appropriate issuer computer 106 for the purpose routing or processing);
transmitting, by the directory server to the access control server, the second authentication request message (Wong disclosed in Fig. 4 and [0105] that “ the wallet provider 210 may transmit a Resume Account message 470, which includes the entered-DVV (from message 468) along with an identifier of the respective account (e.g., a PAN, a reference ID, the inactive token, etc.). to the service provider 230.” Wong’s Resume Account message 470 also anticipates the “second authentication request message”),
wherein the access control server is further programmed to validate the one-time password and generate an authentication response message comprising an authentication indicator in response to validating the one-time password (Wong disclosed in Fig. 4 and [0106] that “At block 414, the service provider 230 then validates the DVV based upon a stored copy of the DVV (from when it was generated in block 410)” and in [0108] that “when (at block 414) the DVV is validated, the service provider 230 … may generate and/or provide an activation script to the wallet provider 210 in message 472, which is forwarded to the mobile device 101 as message 474.” Wong’s “message 472” anticipates the “authentication response message” in the claim. Although Wong disclosed in [0106] and Fig. 4 that the service provider 230 validates the one time passcode DVV, Wong also disclosed in para. [0053] that the DPCAS 214, which is the component within the service provider 230 that performs the DVV validation, may be provided by an issuer 240, meaning that in Wong the Issuer 240 may validate the one-time password.);
receiving, by the directory server from the access control server, the authentication response message comprising the authentication indicator; and transmitting, by the directory server to the access device, the authentication response message comprising the authentication indicator (Wong disclosed in Fig. 4 and [0108] that “when (at block 414) the DVV is validated, the service provider 230 … may generate and/or provide an activation script to the wallet provider 210 in message 472, which is forwarded to the mobile device 101 as message 474”.).
Regarding claim 2, Wong disclosed the method of claim 1.
Wong further disclosed wherein the credential or the token is received by the access device from a portable device associated with the user in an interaction, before the first authentication request message is received by the directory server (Wong disclosed in Fig. 3 and [0073] that “ upon the user 107 providing the wallet credentials to the mobile device 101 at block 302, the mobile device 101 (e.g., at the request of a mobile payment application) transmits the credentials 350 to the wallet provider 210”).
Regarding claim 3, Wong disclosed the method of claim 1.
Wong further disclosed wherein the user device is a mobile phone (Wong, Figs. 1, 3, 4 and [0071-0073], “mobile device 101”).
Regarding claim 5, Wong disclosed the method of claim 1.
Wong further disclosed wherein the access device received the credential or the token from a portable device associated with the user in an interaction prior to generating the first authentication request message; and wherein the first authentication request message includes a transaction authentication request (Wong, Fig. 3 and [0073], “ the mobile device 101 (e.g., at the request of a mobile payment application) transmits the credentials 350 to the wallet provider 210.”).
Regarding claim 6, Wong disclosed the method of claim 1.
Wong further disclosed wherein the authentication indicator is a cryptogram that is generated with a first symmetric key stored at the access control server and the cryptogram is validated, during a transaction, at an authorizing entity computer in communication with a processing network computer using a second symmetric key stored at the authorizing entity computer (Wong, [0108], “The mobile device 101 may then activate the token at block 416 by executing the token activation script, which … may decrypt the previously-encrypted token (at block 419).” And [0110, 0118, 0121], “The payment credential 207 may include one or more of … a public and/or private key to be used to encrypt and/or decrypt information associated with transactions with the account”).
Regarding claim 7, Wong disclosed the method of claim 1.
Wong further disclosed wherein the credential or the token is received by the access device from a portable device associated with the user in an interaction, before the first authentication request message is received by the directory server (Wong, [0073], “the mobile device 101 (e.g., at the request of a mobile payment application) transmits the credentials 350 to the wallet provider 210”), and wherein the portable device comprises a contactless element that can communicate wirelessly with an RF reader in the access device (Wong disclose din [0042] that “a mobile device 101 may include, but is not limited to, cellular phones, laptops, tablets, wearable computing devices, etc., and may interact with an access device 102 (e.g., using NFC) and/or merchant computer 103 ”).
Regarding claim 8, Wong disclosed a method comprising:
receiving, by a directory server from an access device, an authentication request message comprising a credential or a token (Wong disclosed in Fig. 3 and [0073] that the wallet provider 210 “transmits a check account message 352 for one or more accounts of the user 107 to the service provider 230. … this check account message 352 includes one or more PANs of accounts of the user (or other types of account identifiers), which may have been provided by the user 107 (e.g., to the wallet provider) at an earlier time.” In other words, Wong’s service provider 230 receives the PAN/credentials 350 from the wallet provider. Therefore, Wong’s wallet provider 210 anticipates the “access device” in the claim and Wong’s service provider 230 anticipates the “directory server” in the claim);
determining, by the directory server, an access control server using the credential or the token in the authentication request message (Wong disclosed in [0046] that “The PAN included in the authorization request message may be used by the payment processing network 105 to identify the appropriate issuer computer 106 for the purpose routing or processing);
transmitting, by the directory server to the access control server, the authentication request message, wherein the access control server is programmed to transmit a challenge message to a user device associated with a user, wherein the challenge message comprises an out-of-band authentication request which requests the user to log into a local application on the user device by inputting a username, and a secret or biometric into the local application, which then grants the user access to the local application, and then generates and transmits a challenge response message including an indication that the user successfully logged into the local application to the access control server (see Wong, Fig. 3, steps 304-328 and Fig. 4, steps 402-478 and corresponding written descriptions);
receiving, by the directory server from the access control server, an authentication response message comprising an authentication indicator in response to receipt by the access control server of the indication that the user successfully logged into the local application; transmitting, by the directory server, the authentication response message comprising the authentication indicator to the access device (Wong disclosed in Fig. 3 and [0083] that “the issuer 240, at block 316, … return a token activation response message 372B back to the service provider 230” and in Fig. 4 and [0108] that “when (at block 414) the DVV is validated, the service provider 230 … may generate and/or provide an activation script to the wallet provider 210 in message 472, which is forwarded to the mobile device 101 as message 474”).
Regarding claim 9, Wong disclosed the method of claim 8.
Wong further disclosed wherein the credential or the token is received by the access device from a portable device associated with the user in an interaction, before the authentication request message is received by the directory server (Wong disclose din Fig. 3 and [0073] that “ upon the user 107 providing the wallet credentials to the mobile device 101 at block 302, the mobile device 101 (e.g., at the request of a mobile payment application) transmits the credentials 350 to the wallet provider 210”).
Regarding claim 10, Wong disclosed the method of claim 9.
Wong further disclosed wherein the portable device is in the form of a card, and the user device is in the form of a phone (Wong, [0004], “Such mobile devices may thus use a mobile wallet application that, like a conventional physical wallet, may "contain" payment cards (e.g., credit cards, debit cards, prepaid cards), member cards, transportation cards, loyalty cards, etc.”).
Regarding claim 11, Wong disclosed the method of claim 9.
Wong further disclosed wherein the portable device is within the user device (Wong, [0004], “Such mobile devices may thus use a mobile wallet application that, like a conventional physical wallet, may "contain" payment cards (e.g., credit cards, debit cards, prepaid cards), member cards, transportation cards, loyalty cards, etc.”).
Regarding claim 12, Wong disclosed the method of claim 9.
Wong further disclosed wherein the access device is programmed to generate and transmit an authorization request message comprising the authentication indicator, and the credential or the token to a processing network computer (Wong disclosed in Fig. 3 and [0073] that “the wallet provider 210 … will transmit a check account message 352 … for one or more accounts of the user 107 to the service provider 230.”).
Regarding claim 13, Wong disclosed the method of claim 9.
Wong further disclosed wherein the portable device comprises a contactless element that can communicate wirelessly with an RF reader in the access device (Wong disclose din [0042] that “a mobile device 101 may include, but is not limited to, cellular phones, laptops, tablets, wearable computing devices, etc., and may interact with an access device 102 (e.g., using NFC) and/or merchant computer 103 ”).
Regarding claim 16, Wong disclosed the method of claim 8.
Wong further disclosed wherein the local application is a banking application (Wong, [0004], “mobile wallet application”).
Regarding claim 17, Wong disclosed the method of claim 8.
Wong further disclosed wherein the challenge message is an SMS message (Wong, [0009], “a SMS message”).
Regarding claim 18, Wong disclosed the method of claim 8.
Wong further disclosed wherein the access device is programmed to generate and transmit an authorization request message comprising the authentication indicator, and the credential to a processing network computer, and wherein the credential comprises a primary account number (Wong, Fig. 4 and [0108], “activate token 416” and the corresponding written description).
Claim 19 lists substantially the same elements as claim 1, but in product form rather than method form. Therefore, the rejection rationale for claim 1 applies equally as well to claim 19.
Regarding claim 20, Wong disclosed the directory server of claim 16.
Wong further disclosed wherein the authentication indicator is a cryptogram (Wong disclosed in [0110, 0118, 0121] that “The payment credential 207 may include one or more of … a public and/or private key to be used to encrypt and/or decrypt information associated with transactions with the account”).
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.
Claims 4 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Wong et al as applied to claims 1 and 8 above, and further in view of Negru (“Connected cars and in-car payments: the road so far and the road ahead”, published in 2019).
Regarding claims 4 and 14, Wong disclosed the method of claims 1 and 8, respectively. Wong might not have explicitly disclosed wherein the user device is a vehicle.
However, Negru disclosed in its article the state of in-car payment technology that uses a vehicle as a user mobile device for making payments.
Negru’s disclosure would have made it clear to one of ordinary skill in the art that the mobile payment system disclosed by Wong could be integrated with connected cars so that the cars/vehicles are used as a mobile payment platform.
One of ordinary skill in the art would have been motivated to combine Wong with Negru before the effective filing date of the claimed invention because Wong disclosed a mobile system being developed by the company Visa while Negru disclosed that Visa partnered with Honda to develop a prototype of in-car payment service.
Regarding claim 15, Wong disclosed the method of claim 8. Wong might not have explicitly disclosed wherein the user device is an automobile.
However, Negru disclosed in its article the state of in-car payment technology that uses a car (i.e. automobile) as a user mobile device for making payments.
Examiner’s rationale for combining Wong and Negru is the same as that provided in the rejection of claim 14 above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIRLEY X ZHANG whose telephone number is (571)270-5012. The examiner can normally be reached 8:30am - 5:00pm.
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, Joon H Hwang can be reached at 571-272-4036. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHIRLEY X ZHANG/Primary Examiner, Art Unit 2447
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