Acknowledgements
This communication is in response to applicant’s response filed on 05/13/2026.
Claims 1-2 and 11-12 have been amended.
Claims 1-20 are pending and have been examined.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/11/2026 has been entered.
Response to Arguments
Regarding applicant’s arguments:
Applicant’s arguments, see pgs. 10-13, filed 05/13/2026, with respect to the rejection(s) of claims 1 and 11 under Claim Rejections - 35 USC § 103 that the combination of Aabye in view of Bae in further view of Dubey does not teach the amended limitations, specifically, “generating a public/private key pair associated with the EV…before initiating the payment transaction, transmitting a public key of the public/private key pair and the digital card ID to a secure remote commerce (SRC) system via a bind application programming interface (API), thereby causing the SRC system to store a DigitalCardID-to-public key binding in a database…establishing a transport control protocol/internet protocol (TCP/IP) communication session with the CP upon connection of the EV to the CP, the TCP/IP communication session including a secure parallel communication session such that transaction information is communicated separately from a communication channel used to exchange EV charging information, the communication channel including an ISO 15118 communication session…receiving, via the TCP/IP communication session, transaction information from the CP…selecting the digital card ID from the digital wallet based on the payment methods accepted by the CP…signing the transaction information using a private key of the public/private key pair associated with the EV…transmitting the signed transaction information, including the digital card ID, a timestamp, an EVSEID, and a CPO Cert Issuer ID, to the CP via the TCP/IP session, the signed transaction information being included in an IdToken…continuing a charging session setup in parallel by initiating the ISO 15118 communication session with the CP” have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/056,509 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets comprise “establishing a mutually authenticated and encrypted communication session with the CP; receiving merchant information from the CP, the merchant information including a unique identifier (ID) of the CP and a charge point operator certificate issuer identifier; retrieving payment credentials from a digital wallet stored in the EV, the payment credentials comprising a digital card ID assigned to the EV by an SRC system; generating a cryptographically signed payload comprising the digital card ID, the merchant information, and a timestamp, the signed payload being signed by the user system using a private key associated with the EV; transmitting the signed payload; receiving an authorization response from the CP, the authorization response indicating that the payment transaction is approved; and in response to receiving an authorization approval a command to the CP to initiate charging of the EV.”
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: The independent claim 1 contains allowable subject matter. As per claim 1, the closest prior art of record, US Application No. 20260121422 to Aabye teaches receiving, by an electric vehicle, a list of available services associated with an electricity supply terminal. The list of available services includes one or more methods that do not transmit credentials or tokens via a charging cable and one or more methods that do transmit credentials or tokens via the charging cable. The method also includes determining, by the electric vehicle, a set of services in the list of available services. The set of services includes services supported by the electric vehicle. The method also includes transmitting, by the electric vehicle to the electricity supply terminal, a service selection request comprising a service in the set of services. The method also includes receiving, by the electric vehicle from the electricity supply terminal via the charging cable, electricity from the electricity supply terminal. In addition, United States Patent Application No. 20230001810 to Bae teaches a method providing an additional service during electric vehicle charging by (a) the electric vehicle charger (200) detecting connection with an electric vehicle (100) via a charging cable; (b) the electric vehicle charger (200) exchanging charging messages through a charging port in a PLC modem, when the connection is detected in step (a); and (c) the electric vehicle charger (200) providing an additional service for the electric vehicle once the charging begins, and therefore, providing additional services such as software updates, vehicle contents updates requested by a driver during the charging of the electric vehicle, and thus providing convenience for the car owners without visiting car diagnostic service center. In addition, United States Patent Application No. 20230370286 to Palakonda teaches a secure connection is established between a vehicle and a management system. A service request is sent to access a V2X service to the management system, the service request including a vehicle public key. It is received, from the management system, a certificate bundle encrypted using the vehicle public key, the certificate bundle including a service public/private key pair and a certificate for accessing the V2X service. The certificate bundle is decrypted using a vehicle private key corresponding to the vehicle public key. The service public/private key pair and the certificate are used to access the V2X service. In addition, United States Patent Application No. 20200403794 to Lam teaches an electric vehicle is provided. A cloud is coupled to and in communication with the electric vehicle. The cloud includes a server. A plurality of private keys and private key pairs cryptographically secure sensitive information relative to the electric vehicle. The private keys perform one or more of: decryption; encryption: or signing data. A corresponding public key decrypts or verifies a signature of the data signed by its private key Public keys cannot be used to encrypt or sign data. In addition, NPL reference “Smart and secure EV Charging with NXP secure solutions” teaches charging stations are the entry point through which EVs access the smart charging system. The EVSE communicates with the BMS of the EV so that the battery can be charged at the correct rate. An EVSE consists of an MCU/MPU that controls the device and a variety of interfaces, sensors and components such as a display, a metrology unit for energy measurement, NFC readers/bridges for maintenance purposes, POS terminals and discrete secure components (e.g. EdgeLock SE05x/A5000). Communication between the EVSE and the EV can be implemented through the ISO 15118 protocol.
The closest prior art of record fail to teach or suggest, in the context of the ordered combination of the claim, generating a public/private key pair associated with the EV; before initiating the payment transaction, transmitting a public key of the public/private key pair and the digital card ID to a secure remote commerce (SRC) system via a bind application programming interface (API), thereby causing the SRC system to store a DigitalCardID-to-public key binding in a database; establishing a transport control protocol/internet protocol (TCP/IP) communication session with the CP upon connection of the EV to the CP, the TCP/IP communication session including a secure parallel communication session such that transaction information is communicated separately from a communication channel used to exchange EV charging information, the communication channel including an ISO 15118 communication session; receiving, via the TCP/IP communication session, transaction information from the CP, the transaction information including a CP identifier, a charge point operator identifier, an acquirer identifier, and a list of supported payment methods; selecting the digital card ID from the digital wallet based on the payment methods accepted by the CP; signing the transaction information using a private key of the public/private key pair associated with the EV; transmitting the signed transaction information, including the digital card ID, a timestamp, an EVSEID, and a CPO Cert Issuer ID, to the CP via the TCP/IP session, the signed transaction information being included in an IdToken.
Claims 2-10 are dependent on claim 1 and contain allowable subject matter for the same reasons stated above. Claim 11 is analogous to claim 1 and is allowable based on the same reasons listed above for claim 1. Claim 12-20 are dependent on claim 11 and contain allowable subject matter for the same reasons stated above.
A terminal disclaimer may be effective to overcome a nonstatutory double patenting rejection over U.S. Patent App. 19/056,509 (37 CFR 1.321(b) and (c)).
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 will determine what form 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/process/file/efs/guidance/eTD-info-I.jsp.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COURTNEY JONES whose telephone number is (469)295-9137. The examiner can normally be reached on 7:30 am - 4:30 pm CST (M-Th).
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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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/COURTNEY P JONES/Primary Examiner, Art Unit 3699
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