DETAILED ACTION
The following NON-FINAL Office action is in response to Continuation Application filed on February 21, 2025 for 19059821.
Acknowledgements
Claims 1-20 are pending.
Claims 1-20 have been examined.
Notice of Pre-AIA or AIA Status
The present application, filed on or after December 13, 2013, is being examined under the first inventor to file provisions of the AIA
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.
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Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 1 of US Pat. 12,238,096 B2.
Claim 1 of US Pat. 12,238,096 B2 recites: An electronic data protection (EDP) computing device for protecting a protected data object of a user during a current computer interaction in progress between a user computing device associated with the user and a business entity computing device associated with a business entity, wherein transmission of the protected data object to an authorized party maintaining sensitive information of the user is required to complete the current computer interaction, the EDP computing device in communication with the user computing device and the business entity computing device, the EDP computing device comprising at least one processor communicatively coupled to a memory device comprising a non-transitory computer readable medium including computer-executable instructions, wherein when executed by the at least one processor, the computer-executable instructions cause the at least one processor to:
receive interaction data for the current computer interaction from the business entity computing device, the interaction data including an interaction identifier identifying the current computer interaction for which account data is requested, a business entity identifier identifying the business entity computing device, and a user identifier associated with the user, the user identifier corresponding to an unprotected data object including non-sensitive sharable information associated with the user;
generate, using at least in part the user identifier, a token request message including the interaction identifier, the business entity identifier, and a request token;
transmit, prior to performing a lookup in the memory device for the protected data object, the token request message to the user computing device;
cause, using the token request message, the user computing device to activate a user application on the user computing device, wherein activating the user application includes i) displaying, on the user computing device, the interaction identifier, ii) prompting the user to select one of one or more user accounts stored on the user computing device, and iii) causing a secure communication channel to be established between the EDP computing device and the activated user application by requesting the user to confirm the user is a legitimate user allowed to initiate the current computer interaction;
establish, using the request token, the secure communication channel between the EDP computing device and the activated user application by receiving, by the at least one processor via the secure communication channel from the activated user application executing on the user computing device, a token response message including a confirmation indicating that the user is the legitimate user and initiated the current computer interaction identified by the interaction identifier, the token response message including a response token generated by the activated user application, the response token identifying the selected user account without including the protected data object;
in response to receiving the token response message, perform the lookup in the memory device, using the selected user account, for the protected data object associated with the selected user account, the protected data object including at least a portion of the sensitive information associated with the user and the selected user account, the protected data object stored within the memory device;
receive, from the user computing device, a unique key identifier confirming that the user agrees to complete the current computer interaction, the unique key identifier previously transmitted by the EDP computing device to the user computing device; and
in response to receiving the unique key identifier, complete the current computer interaction by transmitting i) the protected data object to an authorized party computing device different from the user computing device and the business entity computing device, the authorized party computing device associated with the authorized party, and ii) a confirmation that the current computer interaction has been completed to the business entity computing device and the user computing device.
Although the conflicting claims are not identical, they are not patentably distinct from each other. Claim 1 of the Patent Document recites some of the limitations of claim 1 of the instant application; however, claim 1 of the Patent Document differs since it further recites additional claim limitations including: establish, using the request token, the secure communication channel between the EDP computing device and the activated user application by receiving, by the at least one processor via the secure communication channel from the activated user application executing on the user computing device, a token response message including a confirmation indicating that the user is the legitimate user and initiated the current computer interaction identified by the interaction identifier, the token response message including a response token generated by the activated user application, the response token identifying the selected user account without including the protected data object and receive, from the user computing device, a unique key identifier confirming that the user agrees to complete the current computer interaction, the unique key identifier previously transmitted by the EDP computing device to the user computing device.
However, it would have been obvious to a person of ordinary skill in the art to modify claim 1 of the Patent Document by removing the additional limitations noted above, resulting generally in the claims of the present application, since the claims of the present application and the claim recited in the Patent Document actually perform a similar function. It is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karison, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Thus, omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
Conclusion
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/ZEHRA RAZA/Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697